Thursday, 8 May 2014

G 1/12 - Water filtration using immersed membranes/Zenon Technology Partnership


Mistaken identity 
My Wife and My Mother-in-Law", a famous optical illusion. Appears in Puck, v. 78, no. 2018 (1915 Nov. 6), p. 11

This is a decision of the Enlarged Board following a referral by the Board of Appeal T 445/08.

In this blog we deal with the main decision. In a subsequent blog we will deal with the admissibility of the referral, where, very unusual, the Enlarged Board could not agree and a minority held the case as inadmissible.

Background of the case
A European application was granted and had been  filed on 18 November 1999 in the name of ZENON ENVIRONMENTAL INC as a PCT application. The patent, once granted, was assigned to Zenon Technology Partnership on 30 May 2006. The transfer of ownership was registered by the EPO with effect from 10 February 2007. An opposition was filed by Siemens Industry, Inc.
The opposition division revoked the patent by a decision dated 28 December 2007. The name of the patent proprietor was correctly cited in the decision as Zenon Technology Partnership.
On 7 March 2008 the Registrar of the Board sent a communication notifying the parties of the commencement and the reference number of the appeal proceedings. This communication bore the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC. The patentee is here registered as Zenon Technology Partnership. Therefore the patentee is asked to clarify the situation".
In response, Zenon Technology Partnership sent a letter dated 13 March 2008 and received on 17 March 2008 confirming that "the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership" and requesting correction of this error; this being the true intention.
The opponent (respondent) challenged the admissibility of the appeal on the ground that it had been filed by a company ZENON ENVIRONMENTAL INC. which was not the registered patent owner. The actual patent owner, namely Zenon Technology Partnership, and the company ZENON ENVIRONMENTAL INC., which had filed the appeal, were two different entities and therefore the second company was not entitled to file an appeal in the place of the registered patent owner. Correction of the identity could have been possible under R.101(1), but that option had expired [before the relevant period under Article 108 EPC had expired].. Correction under R.101(2) only covered correction of formal deficiencies (e.g. such as a wrong spelling or a wrong address). The respondent also held that a correction under R.139 was also not possible because that rule was a general provision over which the specific rules governing the appeal proceedings took precedence according to the general principle of law that "lex specialis generalibus derogat".

The Board of Appeal investigated the case law and decided to refer four questions to the Enlarged Board.

The decision
The answers to the referred questions were (here in a form where the Enlarged Board had rephrased the first question):

Reformulated question (1)  When  a notice of appeal, in compliance with Rule 99(1)(a) EPC,  contains the name and the address of the appellant as provided  in Rule 41(2)(c) EPC and it is alleged that the identification  is wrong due to an error, the true intention having been to  file on behalf of the legal person which should have filed the  appeal, is it possible to correct this error under Rule 101(2)  EPC by a request for substitution by the name of the true  appellant ?
Answer:  yes, provided the requirements of Rule 101(1)  EPC have been met.

Question (2): If the answer is yes, what kind of evidence is to be considered to establish the true intention?
Answer: Proceedings before the EPO are conducted in accordance with  the principle of free evaluation of evidence. This also  applies to the problems under consideration in the present  referral. 

Question (3) If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?
Answer: In cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence,  EPC is available under the conditions established by the case law of the boards of appeal.

Question (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?
Answer: Given the answers to questions (1) and (3), there is no need to answer question (4). 

Reasons for the Decision
(…)

20. (…) Given that it is explicitly required that the notice of appeal identify the appellant (name and address), it is clear that status as a party to the proceedings has to be established within the two-month period under Article 108, first sentence, EPC, this being the relevant period within the meaning of Rule 101(1) EPC. Otherwise, the appeal will be found inadmissible "... unless any deficiency has been remedied before the relevant period under Article 108 [EPC] has expired." In other words, the identity of the true appellant, i.e. the person on whose behalf the appeal was actually filed, must be established by expiry of the two-month period prescribed in Article 108, first sentence, EPC at the latest. 

22. In contrast, Rule 101(2) EPC states that, if the board of appeal finds that the appeal does not comply with Rule 99(1)(a) EPC, it must inform the appellant accordingly and request him to remedy the deficiencies noted within such period as it may specify. If those deficiencies are not corrected in good time, the board shall reject the appeal as inadmissible. Rule 101(2) EPC, which concerns the procedure for correcting the appellant's name and address to meet the requirements under Rule 41(2)(c) EPC, may be applied where there is a deficiency in the notice of appeal, statement setting out the grounds of appeal or any document subsequently produced by the appellant (which is clear from the term "appeal" in Rule 101(2) EPC, which has to be interpreted to mean "the appeal as a whole" - see T 715/01, loc. cit., Reasons No. 10), provided the appellant's identity has already been established within the two-month period as set out above. In other words, it applies to deficiencies which do not affect the establishment of the true appellant's identity as such, e.g. spelling errors or incomplete indication of the appellant's name. 

24. In the boards' case law, Rule 101(2) EPC (formerly Rule 65(2) EPC 1973) has been interpreted so as to allow for a correction of the appellant's identity, under the conditions set out there and within a period to be specified in the communication, after expiry of the appeal periods prescribed in Article 108 CBE. 

25. This case law was established in three decisions cited in the referral: T 340/92, loc. cit., T 1/97, loc.cit., and T 97/98, loc.cit.; it has been followed in several other decisions, which, as a rule, cited T 97/98, the decision published in the EPO's Official Journal. 

The rationale for this case law is as follows:

26. According to Rule 99(1)(a) EPC, the notice of appeal must contain the name and address of the appellant in accordance with the provisions of Rule 41(2)(c) EPC. Besides the administrative purposes, the purpose of this provision is to ensure that the appellant can be identified and so make it possible to establish whether or not the appeal was filed by a party to the proceedings within the meaning of Article 107 EPC (see T 97/98, loc. cit., Reasons No. 1.3). Deficiencies including the need for substitution of the name of the indicated person by another and omissions regarding the appellant's name or address may be remedied under Rule 101(2), first sentence, EPC by invitation of the board of appeal, even after expiry of the two-month time limit under Article 108 EPC (see T 1/97,loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). However, according to the boards' case law, the correction of the deficiency or the omission is possible only if it "does not reflect a later change of mind as to whom the appellant should be" (see T 97/98, loc. cit., Reasons No. 1.3), i.e. the appellant must be sufficiently identifiable within this period for filing an appeal (see T 1/97, loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). This is the case if "it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed" (T 97/98, loc. cit., Reasons No. 1.3; see also T 1/97, loc.cit., Reasons No. 1.1 and the other decisions cited there).

27. In other words, an incorrect designation of the appellant in the notice of appeal may be corrected under Rule 101(2) EPC, provided that the appellant was identifiable, i.e. the provisions on the adversely affected party in Article 107 EPC and Rule 101(1) EPC were met, on expiry of the two-month period, so that the correction only expresses what was intended when the appeal was filed within that period. 

28. From the rationale of T 97/98 it follows that, in the event of a deficiency as to the appellant's identity, the board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file, i.e. ascertain who must be deemed in all likelihood to have filed the appeal and, consequently, replace the name indicated in the appeal with that of another natural or legal person. 

29. The Enlarged Board fully endorses this case law, in which it is considered that an incorrect indication of the appellant's identity is a deficiency which can be remedied, provided "its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal" (see T 97/98, loc. cit., Reasons No. 1.3). As is well-established case law, the board may point out the deficiency in the communication under Rule 101(2) EPC, which relates to deficiencies in the name and address given in the notice of appeal or also the statement setting out the grounds of appeal.The Enlarged Board has no reason not to allow correction in response to a Rule 101(2) EPC communication pointing out deficiencies as to the appellant's name and address. In response to such a communication the original indication of the appellant's identity may be brought in line with its correct name, for example by way of a request to correct a wrongly quoted name by replacing it with the true appellant's correct name. It goes without saying that evidence of the true intention as to who is the natural or legal person on whose behalf the appeal was intended to be filed must be produced and evaluated by the board concerned. This is also in line with the relevant ruling in G 2/04 (loc. cit., Reasons No. 3.1). The Enlarged Board therefore has no reason to deviate from the case law followed by the boards.

30. Thus, the answer to question (1), as reformulated above - namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met. 

31. Question (2) "If the answer is yes, what kind of evidence is to be considered to establish the true intention?"  The referred question concerns what kind of evidence is needed to establish true intention. In general terms, it must be emphasised that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration here. As the Enlarged Board of Appeal pointed out in G 3/97 (OJ EPO 1999, 245, Reasons No. 5) and G 4/97 (OJ EPO 1999, 270, Reasons No. 5), "(t)he principle of free evaluation would be contradicted by laying down firm rules of evidence defining the extent to which certain types of evidence were, or were not, convincing". The Enlarged Board of Appeal sees no reason not to apply this principle in the present case and to provide guidance on its application. 

32. Question (3)  "If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC ?" 
Even though the answer to question (1) was yes, the Enlarged Board of Appeal wishes to respond to question (3) on whether Rule 139, first sentence, EPC can apply if the name of the appellant was incorrect and the correction to be allowed involves "substitution" of the appellant, a question on which the appellant (patentee) and the respondent (opponent) have commented extensively and argued in support of differing points of view.

33. First of all, it is important to point out that Rule 139 EPC provides for the correction of errors indocuments filed with the EPO. This appears in Chapter VI of Part VII of the Implementing Regulations to the EPC, which covers Rules 137 to 140 EPC. Part VII of the Implementing Regulations relates to Part VII of the EPC (Articles 113 to 134a EPC), which is headed "Common provisions".

34. Rule 139, first sentence, EPC allows the correction of "linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office". This list and the rule's heading ("Correction of errors in documents filed with the European Patent Office") make clear that the rule deals with cases in which an error of expression in a declaration has occurred or a mistake in a document is the consequence of an error.

35. Since it applies to any document filed with the EPO, the Enlarged Board of Appeal sees no reason why it should not apply to appeals.

36. The first sentence of Rule 88 EPC 1973, or now (with the same wording) of Rule 139 EPC, applies generally (see J 4/85, OJ EPO 1986, 205, and subsequent case law). This follows clearly from the EPC structure as intended by the legislator, Rule 139 EPC having been left in the part relating to "Common provisions", where it had already been in the EPC 1973.
37. The boards of appeal, in particular the Legal Board of Appeal, have developed a large body of case law on corrections under the first sentence of Rule 88 EPC 1973 (first sentence of Rule 139 EPC) and established the following principles:

(a) The correction must introduce what was originally intended. For example, an applicant wishing to add a designation not originally intended on filing cannot rely on the first sentence of Rule 88 EPC 1973 (J 8/80, OJ EPO 1980, 293, in particular Reasons No. 7). The possibility of correction cannot be used to enable a person to give effect to a change of mind or development of plans (J 8/80, loc. cit., Reasons No. 6; J 6/91, OJ EPO 1994, 349). It is the party's actual rather than ostensible intention which must be considered.
(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one (J 8/80, loc.cit., Reasons No. 6).
(c) The error to be remedied may be an incorrect statement or an omission.
(d) The request for correction must be filed without delay.
Furthermore, an allowable correction under Rule 139 EPC has retrospective effect (J 4/85, loc. cit., Reasons No. 13; as endorsed in several subsequent decisions, for example J 2/92, OJ EPO 1994, 375, Reasons No. 5.2.2; J 27/96 of 16 December 1998, Reasons No. 3.2; J 6/02 of 13 May 2004, Reasons No. 2; J 23/03 of 13 July 2004, Reasons No. 2.2.1 and J 19/03 of 11 March 2005, Reasons No. 3).
38. Consequently, if correction of the error is allowed, the appeal will be found admissible and the condition of Article 107 EPC will have been satisfied within the two-month period according to Article 108, first sentence EPC.

39. The Enlarged Board of Appeal cannot subscribe to the argumentation put forward by the respondent (opponent) according to which, applying the general principle of lex specialis derogat legi generali, only Rule 101 EPC is applicable, since this is "lex specialis" in relation to Rule 139 EPC, which has to be considered "lex generalis". Leaving aside the explanations set out above, the Enlarged Board of Appeal cannot find in the wording of Rule 139 EPC any indication that this generally applicable provision refers to exceptional provisions. The EPC drafters did not in the wording of Rule 139 EPC make use of any introductory or final formula which, by definition, would have referred to a specific provision excluding the general provision. This is the case, for example, in Rule 100(1) EPC (formerly Rule 66(1) EPC 1973), which provides that the provisions relating to proceedings before the department which has taken the decision impugned apply to appeal proceedings, "unless otherwise provided". In this respect, in G 6/95 (OJ EPO 1996, 649) the Enlarged Board of Appeal decided that the provisions of Rule 71a(1) EPC 1973 (now Rule 116(1) EPC) relating to the first-instance procedure are not applicable within appeal proceedings, since the procedure before the boards of appeal is otherwise provided for, namely in the Rules of Procedure of the Boards of Appeal (RPBA). Other EPC provisions, for example Rules 5, second sentence, 109(1), first sentence, 131(2), second sentence, 132(2), first sentence and 137(1) EPC, refer to special provisions and clearly indicate that the legislator wanted to add to a general provision one or more special provisions "derogating" from it. It is clear that the legislator did not include in Rule 139EPC a formula permitting the conclusion that it included one or more specific provisions that derogate from the general provision. The Enlarged Board of Appeal concludes that Rule 139 EPC is generally applicable as indicated above. In its decision J 4/85 (loc. cit., Reasons No. 13) the Legal Board of Appeal moreover stated that another provision (in that case, Rule 43 EPC 1973) cannot supplement the provisions of Rule 88 EPC 1973. 

40. For the above reasons, the Enlarged Board of Appeal's response to question (3) is that, in cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available. The well-established case law of the boards of appeal on the application of Rule 88, first sentence, EPC 1973 and/or Rule 139, first sentence, EPC provides the necessary guidance on its application in the event of an error in the appellant's name.
41. Question (4) "If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?"
Given the answers to questions (1) and (3), there is no need to answer question (4). 

The whole decision can be found here. The file wrapper can be found here.

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