Tuesday, June 24, 2014 T 1142/12 - A matter of organisational nature

Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?

In the decision that forms the subject of the present appeal, the request of the applicant to hold oral proceedings in Munich rather than in The Hague was refused on the grounds that according to Art. 18(2) EPC oral proceedings were to be held before the Examining Division itself and consequently had to be held at the location of the Examining Division to which the case was assigned. In the present case the responsible Examining Division was located in The Hague.

The decision was supported with reference to decision T 1012/03, Art. 10(1), (2)(a) and (b) EPC.

Oral proceedings before the Examining Division were held on 15 December 2011 at the EPO branch at The Hague in the absence of the applicant. The application was found not to meet the requirements of Art. 84, Art. 54 and 56 EPC.

The applicant lodged an appeal against the decision. In the statement of grounds, the appellant focused on the location of the oral proceedings. As main request, the applicant requested that the decision under appeal be set aside with the order to conduct oral proceedings at the EPO in Munich. As auxiliarily request, the applicant requested the following question concerning an important point of law be referred to the Enlarged Board of Appeal in accordance with Art. 112(1)(a) EPC:

"Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?"

Reasons for the Decision

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1.2 In the present case, the issue relating to the competence of the Board to decide upon the question of the venue of oral proceedings is to be dealt with first, for the reason that if the Board came to the conclusion that it had no competence in this respect, the Board would also have no competence in matters subsidiary thereto or associated therewith, for example the referral of a question to the Enlarged Board of Appeal on that issue.

2. First auxiliary request

2.1 The crucial issue to be considered first is to determine who has the power to decide on the location of oral proceedings, namely, whether such a decision is in the hands of the Examining Division or in the hands of the management of the EPO.

2.2 The reasoning followed by the appellant is based on the assumption that the Examining Division had the power to decide on such a matter, or at least that in particular cases, especially where the applicant presented a request to hold oral proceedings in Munich instead of in The Hague with good reasons, such a request could not be refused.

2.3 This question is obviously of particular importance because on its answer depends the determination of the which body is empowered to review such a decision.

2.3.1 If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal.

2.3.2 Alternatively, if the decision on the venue of oral proceedings was within the competence of the management of the EPO and was thus within the power of the President of the European Patent Office then any challenge to such a decision by a party would in fact be directed against a regulation adopted by the President or somebody acting on his behalf, but not against a decision of the Examining Division and therefore would not fall within the competence of the Boards of Appeal.

2.4 Under the provisions of Art. 18(1) EPC the Examining Divisions are responsible for the examination of European patent applications.

2.5 Chapter IV of the Implementing Regulations relating to the examination by the Examining Division (R. 70a to 72 EPC) provides no indication as to the venue of oral proceedings.

2.6 The provisions of Art. 116(1) and (3) EPC relating to oral proceedings contain no mention as to where oral proceedings are to be held, nor do R. 115 and R. 116 EPC provide any such guidance.

2.7 As a matter of principle, in a democratic organisation, a given body cannot act outside its own sphere of competence as laid down by the applicable law, i.e. the EPC, otherwise its decision would be void.

2.7.1 Nowhere in the EPC can a provision be found suggesting that the Examining Divisions were entitled to decide on matters other than patent applications in accordance with the rules and principles laid down by the EPC.

2.7.2 As stated in decision T 1012/03, which is not contested by the appellant in his submissions in the present case, the practical aspects of the organisation of oral proceedings are a matter relating to the management of the EPO, which lies under the power of the President of the EPO as provided by Art. 10(2) EPC (see point 4 of said decision).

Accordingly the Examining Divisions are clearly not allowed to take a decision, whatever this would be, on this matter.

2.7.3 The mere decisional power of the first instance bodies as well as the Boards of Appeal on this issue extends to the point at which the decision to hold oral proceedings in a specific case is taken. By contrast, the place, the room and even the date are of organisational nature.

2.8 The contested decision based its reasoning on Art. 18(2) EPC.

2.8.1 Art. 18(2) EPC stipulates only before whom oral proceedings must be conducted, namely before the Examining Division. As correctly indicated by the appellant, this provision gives no indication as to the geographical location at which oral proceedings should be conducted and does not empower an Examining Division to take any decision in this respect.

2.8.2 Therefore, the Examining Divisions have no authority according to the EPC to take a decision relating to where oral proceedings are to be held. The consequence is that that issue is not part of the substance of the decision taken by the Examining Division.

2.9 Under the provisions of Art. 21 EPC, the Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions and the Opposition Divisions, and the Legal Division.

2.9.1 The powers of the Boards of Appeal are thus confined to said defined area which does not include management matters.

2.9.2 Therefore the present Board has no power to challenge the contested "refusal of the request to hold oral proceedings in Munich instead of The Hague". This refusal was merely the expression of the way the EPO is organised whereby in the case that the Examining Division is located in The Hague, oral proceedings are to be held in The Hague and when the Examining Division is located in Munich, oral proceedings are to be held in Munich.

2.9.3 As a matter of general consideration, it may well be that users of the European patent system are dissatisfied with this aspect of the organisation of work within the EPO. However, means other than appeal proceedings have to be found to challenge that issue.

2.10 The respect of the separation of the powers within the European Patent Organisation is a matter of the utmost gravity for it is the first guarantee of a smooth running of this institution.

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3. Request for referral to the Enlarged Board of Appeal

The request for referral to the Enlarged Board of Appeal in accordance with Art.112(1)(a) is to be rejected for the reasons given above.

The question "Can a request by a party to conduct oral proceedings at the European Patent Office in Munich instead of at the branch office in The Hague be denied?" is, as already stated, related to an organisational matter beyond the scope of the power to decide of the Examining Divisions and hence of the Boards of Appeal.

As a consequence, the present Board is not empowered to decide on this issue, and correspondingly is not empowered to refer a question in respect thereof to the Enlarged Board of Appeal.

(...)

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.

Catchword

The question of the venue of oral proceedings is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.

This decision has European Case Law Identifier ECLI:EP:BA:2014:T114212.20140408. The whole decision can be found here. The file wrapper can be found here.

Photo by John Morgan obtained from Flickr.