Saturday, May 10, 2014 G 1/12 - Water filtration using immersed membranes/Zenon Technology Partnership - Admissibility of the referral

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 admissibility of the referral, where, very unusual, the Enlarged Board could not agree and a minority held the case as inadmissible. The previous blog dealt with the decision itself.

In summary, the minority considers that the law has been clear since T 97/98. It disagrees with the referring Board in that there were also other trends and regards those decisions as being concerned with quite different issues. In two instances the minority refer to the reasoning of the referring Board  as containing two legal “non sequiturs” (an argument in which its conclusion does not follow from its premises). The minority also disagrees with the definition given by the majority of the Enlarged Board of “point of law of fundamental importance”.

Nevertheless, the minority agrees with the answers to the questions. The majority did find the referral admissible and in its examination to answer the questions endorsed decision T 97/98 (which the minority anyhow saw as being followed by the Boards).

Reasons for the Decision

(…)

8. As the points of law referred in the present case also relate to the admissibility of the appeal, the Enlarged Board must examine, in the following order, whether the following conditions for admissibility of the referral are met:

• "referral on admissibility of the appeal",
• "uniform application of the law / point of law of fundamental importance" and
• "need for a decision".

The Enlarged Board has first established that, in this case, the referring board is a board of appeal within the meaning of Article 21(4)a) EPC, that appeal proceedings are pending and that it is being asked to decide the admissibility of the appeal.

"Referral on admissibility of the appeal"

9. The points of law referred relate to the admissibility of the appeal. The question therefore arises whether a referral relating to an appeal not yet found admissible by the referring board is itself admissible. As a general rule, a referral presupposes an admissible appeal. However, as already stated in decisions G 8/92 of 5 March 1993, Reasons No. 3, and G 3/99 (OJ EPO 2002, 347, Reasons No. 4), even if the Enlarged Board considers as a matter of principle that, for a referral to be admissible, the appeal has to be admissible, this does not apply if the referral itself concerns the admissibility of the appeal. Without this exception, in cases like this one, the boards would be denied the opportunity to refer questions on important points of law concerning the admissibility of an appeal. This would contradict Article 112(1)(a) EPC, where no restrictions of that kind appear. Consequently, a board of appeal within the meaning of Article 21(4)(a) EPC may admissibly refer to the Enlarged Board points of law concerning the admissibility of the appeal.

"Uniform application of the law / point of law of fundamental importance"

10. Under Article 112 EPC, there are two grounds on which questions may be referred to the Enlarged Board. The first is "uniform application of the law" and applies where the boards have given diverging decisions or where a board intends to deviate from an interpretation or explanation of the EPC given by one or more boards in previous case law. The second ground "point of law of fundamental importance"- only the English wording of which was changed in the revised EPC 2000 (from "important" to "fundamental importance") in order to bring it into line with the French and German versions - requires that a board consider that the question cannot be answered directly and unambiguously by reference to the EPC. A point of law is also to be regarded as of fundamental importance if its impact extends beyond the specific case at hand. Such importance is established if it could be relevant to a large number of similar cases.

11. In the present case, almost all questions in the referral decision fulfil the requirement that they raise points of law of fundamental importance concerning the admissibility of the appeal and the two legal procedures, i.e. Rule 101(2) EPC and Rule 139, first sentence, EPC, potentially applicable for remedying deficiencies in the indication of an appellant's name. The Enlarged Board of Appeal takes the view that the question concerning the admissibility or inadmissibility of an appeal filed by a person appearing at first sight not to have standing to do so relates to a point of law of fundamental importance because it will be relevant in a potentially large number of cases and is therefore of great interest not only to the parties to the specific appeal proceedings in question. Moreover, settling this point of law is important not only to the users of the European patent system but also to all the boards of appeal and the EPO itself, i.e. to the department of first instance in examination proceedings when it comes to applying the provisions on interlocutory revision (Article 109 EPC), under which a decision can be rectified only if, among other requirements, the appeal has first been found admissible, and also to the department of first instance in opposition proceedings, given that the provisions on admissibility of the opposition (Rule 76(1) and (2) EPC) have a similar wording to the provisions in Rule 101(1) and (2) EPC. Indeed, on this last point, both the parties to the appeal proceedings and the President of the Office, in his observations, noted the similar wording of Rule 76(1) and (2) and Rule 101(1) and (2) EPC and presented lines of arguments on both legal situations. 

12. The requirement of uniform application of the law is also fulfilled in the present case:

In the analysis of the referring board, some decisions in the case law have allowed deficiencies in the appellant's name to be remedied under Rule 101(2) EPC, by applying a broad definition of "deficiency", by having recourse to a subjective notion of "true intention" requiring thorough investigation by the board and by introducing the possibility of deriving "from the information in the appeal, if necessary, with the help of the information on file, with a certain degree of probability by whom the appeal should have been filed" (see, to that effect, Reasons No. 7.2 to 7.4 of the referral decision). By contrast, in other decisions on analogous situations, the boards have applied Rule 139, first sentence, EPC, without making any finding as to the procedure for remedying defects under Rule 101(2) EPC (see e.g. T 964/98 of 22 January 2002). In these cases, the error was rectified solely on the basis of the requester's "true intention".

13. Furthermore, the referring board intended to take a line which may deviate from the case law applying the Rule 101(2) EPC procedure for remedying an incorrect name. In point 3 of its reasons for the decision, it indicated that "[t]he Board tends to concur with the respondent that in the circumstances of the case at hand there are no deficiencies with respect to the requirements of Rules 101(2) and 99(1)(a) EPC. This latter rule, by incorporation of Rule 41(2)(c) EPC, defines the standard formal administrative items of information required to fill out the notice of appeal, which will permit the identification of the appellant. Article 107 EPC on the other hand, once the appellant has been identified, defines an admissibility requirement to be fulfilled by the appellant in order to be entitled to appeal."

"Need for a decision"

14. According to Article 112(1)(a) EPC, a referral to the Enlarged Board should only be made if a decision by the Enlarged Board is considered to be necessary. Such a decision is necessary if the referring board's decision on the specific appeal before it depends on the Enlarged Board's ruling. In this case the referred questions relate to the admissibility of the appeal. As the referring board will inevitably have to decide on this issue, the Enlarged Board is satisfied that a decision on the referral is needed. 

15. In view of the above, the referral is admissible.  A minority of the members of the Enlarged Board of Appeal take a different view on the admissibility of the referral. Their opinion is set out below at the end of this decision.

Minority opinion on admissibility of the referral

42. In the opinion of the minority, the present referral is inadmissible for the reason that the referring decision shows no need for a decision of the Enlarged Board of Appeal either to ensure uniform application of the law or to determine a point of law of fundamental importance. 

43. The minority considers that the law has been clear at least since decision T 97/98 (loc. cit.). The referring board's analysis of that decision and others which have followed it and which in some cases have developed its principles (see Reasons No. 5.3 to 5.8 of the referring decision) is an excellent appraisal of the relevant case law and shows (see in particular Reasons No. 5.8) how the referring board could have reached a decision on the basis of the case law without making the present referral. The referring board then states in its decision (see Reasons Nos. 5.9 to 5.9.7) that the case law also shows another trend and in this connection mentions three cases, namely G 2/04 (loc. cit.), T 128/10 (loc. cit.), and T 656/98 (loc. cit.). In the opinion of the minority, these three cases do not show another trend, because they are concerned with quite different issues. 

44. G 2/04 was not concerned with the question of the identity of the appellant per se but with the question whether, contrary to previous case law, opponent status could be freely transferred. The relevant facts of the case underlying the referral to the Enlarged Board (T 1091/02, OJ EPO 2005, 14) were that: 

"In the proceedings giving rise to the referral, two oppositions were filed in the name of Akzo Nobel N.V and Vysis Inc., respectively. After rejection of the oppositions, an appeal was filed on 25 October 2002 in the name of bioMérieux BV. It was submitted thatbioMérieux BV now owned the diagnostic activities of Akzo Nobel NV to which the opposition pertained. As a precautionary measure in case the appeal in the name of bioMérieux B.V was considered inadmissible, it was requested that the appeal be treated as being in the name of Akzo Nobel NV. 

In an accompanying declaration it was explained that the diagnostic activities of Akzo Nobel had been concentrated in its subsidiary Organon Teknika BV. As a result of restructuring within Akzo Nobel NV, an agreement effective as of 30 June 2001 had been reached to transfer the diagnostic activities of Organon Teknika BV from Akzo Nobel N.V. to bioMérieux S.A. The opposition had been instituted by Akzo Nobel NV in the interest of its European diagnostic business as conducted on its behalf by its business unit Organon Teknika BV. All the shares of Organon Teknika BV had been transferred to bioMérieux S.A. which was now 100% the owner of Organon Teknika BV, now called bioMérieux BV" (see G 2/04, section II).

44.1 The present referring board then refers to and draws the following conclusions from the views of the Enlarged Board in Reasons No. 3.1 of G 2/04: 

"The Enlarged Board noted that the opponent Akzo Nobel NV, clearly identified as the opponent in the declaration of opposition, was not indicated as the appellant but bioMérieux was (point 3.1 of the Reasons). This was in conformity with the true intention of the author of the declaration. The Enlarged Board went on to state that it was the established case law that in such circumstances therewas no deficiency which might be remedied in accordance with Rule 64(a) in conjunction with Rule 65(2) EPC 1973, nor was there an error which might be corrected in accordance with Rule 88 EPC 1973 (point 3.1 of the Reasons). 

Thus [the referring] Board cannot conclude from these statements that the Enlarged Board really endorsed T 97/98 in its general statements, or T 715/01, applying these statements: Indeed the Enlarged Board then concluded that ‘considering the overriding interest that a party must be identifiable, the [Enlarged) Board sees no reason for a broadening of the scope of application of Rule 65(2) or Rule 88, first sentence, EPC [1973]’ (point 3.1 of the Reasons)" (see the referring decision, Reasons Nos. 5.9.1 to 5.9.2 ). 

44.2 The minority considers that this reasoning contains two legal non sequiturs. The Enlarged Board did indeed state in Reason No. 3.1 of G 2/04:

"The declaration in the opposition concerning the legal personality of the (first) appellant is quite clear and not open to interpretation. The opponent Akzo Nobel NV is not indicated as the appellant but bioMérieux BV is. This was in conformity with the true intentions of the author of the declaration. According to consistent case law, in such a situation, there is no deficiency which may be remedied in accordance with Rule 64(a) in conjunction with Rule 65(2) EPC (see in detail T 97/98, OJ EPO 2002, 183 - Spinning process/MINNTECH, Reasons, point 1.3 et seq.) nor an error which might be corrected in accordance with Rule 88, first sentence,EPC (T 964/98 of 22 January 2002, not published in OJ EPO - Purines/MERRELL, Reasons, point 1)."  That is nothing less than a demonstration of the application of the principle in T 97/98 – since the identity of the appellant had been made "quite clear and not open to interpretation", there was no deficiency to be remedied and no error to be corrected, unlike the position in T 97/98. As set out in T 97/98, the true intention was considered and, that intention being clear as to the precise identity of only one possible party as the intended appellant, no other possibility could be considered. The referring board observes that it "cannot conclude from these statements that the Enlarged Board really endorsed T 97/98 in its general statements", but this is the first non sequitur. The Enlarged Board simply said that, on the facts of the underlying case in G 2/04, the approach in T 97/98 could not be applied: no question of endorsing or not endorsing T 97/98 arose (though, if any inference is to be drawn from its observations, it is that by saying T 97/98 did not apply the Enlarged Board was at least accepting it as applicable in situations, other than in the case before it, where there was a deficiency which could be remedied). 

44.3 The referring board then refers to the remaining passage in Reason No. 3.1 of G 2/04, which reads:

"Considering the overriding interest that a party must be identifiable, the [Enlarged] Board sees no reason for a broadening of the scope of application of Rule 65(2) or Rule 88, first sentence, EPC. Therefore, bioMérieux B.V. cannot be replaced by Akzo Nobel NV byway of correction and for the purposes of the present referral, the relation between these provisions (cf. T 715/01 of 24 September 2002 - Glycosides/COGNIS, not published in OJ EPO, Reasons, point 9) need not be discussed." 

Of this the referring board says:

 "In the [referring] Board's interpretation this only means that where there is no deficiency in the sense of Rules 99(1)(a) and 101(2) EPC there is no reason to search for the true intention, the Enlarged Board leaving open the question of the relation between Rules 101(2) EPC (Rule 65(2) EPC 1973) and 139 EPC (Rule 88 EPC 1973)" (see the referring decision, Reasons, No. 5.9.3). 

In a literal sense the referring board is of course correct – if, as the Enlarged Board held in G 2/04, the true intention of the appellant is so clear that there can be no deficiency, then there can be no reason to search for the true intention. However, the referring board's interpretation cannot be read into the Enlarged Board's statement and this is the second non sequitur. The Enlarged Board only said that, having established that the intended identity of the appellant was made quite clear, there was no reason to reinterpret Rule 65(2) EPC 1973 in a broader manner than the then existing case law. (Again, if any inference is to be drawn, it is that the Enlarged Board considered the interpretation offered by T 97/98 to be correct.) 

44.4 The minority thus sees no inconsistency between T 97/98 and G 2/04, but rather consistency.

(…)

45. Equally, the minority cannot see any basis in decisions T 656/98 and T 128/10 for an inconsistency with T 97/98 and its related case law. (…)

46. Accordingly, in the opinion of the minority, there is no inconsistency in the case-law and the legal position is clear.  (…)

47. There is also no situation "where a board intends to deviate from an interpretation or explanation of the EPC given by one or more boards in previous case law" (see point 10 above). In the referral decision no reason is given why either of the two available procedures (under Rules 101(2) and 139 EPC) or their mere coexistence would be legally problematic. As is clear from the questions and the reasoning in the referral decision, the referral was also prompted by a purported (but actually non-existent – see points 43 to 45.4 above) inconsistency of the case law on the relationship between Rule 102(1) and (2) EPC. Under these circumstances the minority cannot see that the referring board had the specific intention to deviate from the case law because it considered it to be problematic on a ground other than inconsistency. Even if that was its intention, the referring board has not in fact presented any such ground with the consequence that the referral would be unsubstantiated in this respect. Thus in the minority's opinion the admissibility requirement "for ensuring uniform application of the law" (Article 112(1) EPC) is also not met (in contrast to the finding of the majority – see point 12 above). 

48. As to the further possible ground for a referral by a board pursuant to Article 112 EPC, namely "if a point of law of fundamental importance arises", the minority concurs with the majority's view that this ground is established if a board considers that the question cannot be answered directly and unambiguously by reference to the EPC (see point 12 above). However, it cannot see, and it was not argued, that this is true of the point of law at issue. The minority does not share the view that, "a point of law is also to be regarded as fundamental, if its importance extends beyond the specific case in hand" and that such importance is established if the point of law could be relevant to a large number of similar cases" (see point 10 above). This view implies that "importance" within the meaning of Article 112 EPC is nothing more than mere relevance, the number of cases affected then being neither a suitable nor an appropriate criterion for establishing the admissibility of a referral to the Enlarged Board of Appeal. Apart from the fact that it is impossible to ascertain the number of cases in which a point of law was, is or might become relevant, it remains also totally unclear where the line between a small and a large number of cases has to be drawn and whether the location of that line depends on the point of law concerned. Thus the alternative mentioned in Article 112(1) EPC, namely that an important point of law arises, has not been shown and the admissibility of the referral cannot be based on that ground either. 

49. For these reasons the minority concludes that in the present case none of the questions in the referral decision fulfils the specific requirements of Article 112(1)(a) EPC, which requirements cannot be replaced by the presence of a degree of uncertainty surrounding the issues put forward in a referral decision. In contrast to the relevant finding of the majority (see point 14 above), the minority does not accept that the referring board needs the opinion of the Enlarged Board on the referred questions in order to ensure uniform application of the law, or because a point of law of fundamental importance has arisen, and/or in order to dispose of the case before it. For the avoidance of any doubt it should be added that, while the minority considers for those reasons that the referral is inadmissible, it agrees with the answers to the referred questions.