Friday, 4 July 2014

J 22/12 - As grant falls, opposition fails


Two appeals for the price of one: an earlier appeal filed by the proprietor against the grant of its patent and an appeal  -the subject of this decision- directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. Even though the Notice of Opposition seemed to be duely filed, well within 9 months from the date of mention of the grant, the letter stated that the Appellant's Notice of Opposition could not be considered as validly filed because the decision to grant was rectified  by the Examining Division as a result of the earlier appeal.

Summary of Facts and Submissions

I. The appeal is directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. This letter stated that the Appellant's Notice of Opposition could not be considered as validly filed.

II. The factual background to this decision involves two appeals: the appeal which is the subject of this decision and which is mentioned above, and a chronologically earlier appeal filed by the proprietor against the grant of its patent.

III. The decision to grant the European patent No: 1358272 was notified to the proprietor's representative on 16 February 2012. The EPO took this action because it had in error deducted the fees for grant and publication from the account of a firm of representatives that had ceased to represent the proprietor in 2005 [albeit the automatic debit order was revoked per 26.10.05 - the latter was however overlooked by the EPO]. This erroneous action of the EPO led to the mention of grant of the patent in suit appearing in the Patent Bulletin on 14 March 2012

IV. On 11 April 2012 the proprietor's representative filed a notice of appeal and a statement of grounds of appeal against the decision to grant the patent, "...prematurely and in error ...". The detriment that the proprietor claimed to had suffered was that he was no longer able to file a divisional application [and that the time limits for the costly step of validation were brought forward in time].

V. On 10 May 2012 the Appellant filed a notice of opposition against the patent whose mention of grant had appeared in the Patent Bulletin on 14 March 2012.

VI. On 15 May 2012, the Examining Division informed the proprietor's representative that it would rectify its decision to grant the patent and would refund the appeal fee [interlocutory revision inder Article 109 EPC].

VII. In a letter dated 24 May 2012, the Formalities Officer, on behalf of the Examining Division, informed the Appellant as follows:

"...

Following the appeal of 11.04.2012 the decision to grant dated 16.02.2012 was rectified with EPO Form 2710 of 15.05.2012 and sent to EPO postal services on 08.05.2012.
As the examination procedure is resumed, it is not possible to file an opposition during this part of the procedure.
Consequently your notice of opposition of 10.05.2012 cannot be considered as validly filed.

For the Examining Division"

VIII. On 24 July 2012 the Appellant filed an appeal against the purported decision of the Examining Division set out in the Formalities Officer's letter dated 24 May 2012 and paid the appeal fee. A statement of grounds of appeal was filed.

IX. The Appellant argued that it had fulfilled all the requirements for filing a valid opposition. The interlocutory revision of the decision to grant by the Examining Division took place subsequent to the filing of the opposition and did not affect the validity of the filing of the opposition. The Appellant referred to the principle of legal certainty in support of its position.

[...]

Reasons for the Decision

Admissibility of Appeal

1. The key issue to be decided is whether the Examining Division's letter of 24 May 2012 is a decision, or merely a communication. Whether a document is to be considered as a decision depends on the substance of its contents, not on its form - see J 8/81 OJ EPO 1982, 10, point I of Headnote and point 3 of the Reasons. The criterion of substance has to be assessed in its procedural context - see e.g. T 713/02 OJ EPO 2006, 267, points 2.12 and 2.14, second paragraph of the Reasons.

2. Procedural context of the Examining Division's letter of 24 May 2012

2.1 In the present case a valid appeal against the decision to grant had been filed by the Respondent-Proprietor after the publication of the mention of the grant.

2.2 Article 106(1) EPC provides that an appeal shall have suspensive effect. Thus, by filing a (valid) appeal against a decision to grant, an applicant/proprietor prevents the decision to grant from having any legal effect until the appeal is resolved. Otherwise an appeal would be nugatory (decision J 28/94, OJ EPO 1995, 742). If it is not possible to suspend or to defer the publication of the mention of grant until such an appeal is decided, the EPO should take all necessary steps to advise the public that the mention of grant was no longer valid (see also T 1/92, OJ EPO 1993, 685, point 3.1 of the Reasons). On the other hand, even after an appeal the decision as such remains and can only be set aside or confirmed by the Board of Appeal (see J 28/03, OJ EPO 2005, 597) or by way of interlocutory revision under Article 109(1) EPC. This means that the validity of an opposition filed against the patent concerned depends on the outcome of the appeal of the applicant/proprietor against grant.

2.3 Thus, by the time the Appellant filed its notice of opposition, the legal consequences of the decision to grant the patent had become subject to the suspensive effect of the Respondent-Proprietor's appeal against the decision to grant. As the Examining Division decided to rectify its decision to grant under Article 109 EPC, neither this decision, nor the publication of mention of grant had any legal consequences. Thus no granted patent is deemed to have existed against which an opposition might have been filed. It is thus immaterial whether or not the Appellant had fulfilled all the requirements for filing a valid opposition.

2.4 In the light of this procedural situation, namely that there were no proceedings in existence in which a decision could be made vis à vis the Appellant, and from the plain wording used, the letter of 24 May 2012 is to be seen as a mere communication of information, this information being that there is no granted patent which may be opposed. This letter clearly makes no decision on, nor reference to, the merits of the Appellant's opposition. That this communication is the last word of the EPO on this subject does not imply that it has decisional character; once the EPO has provided this information to the Appellant no useful purpose would have been served by repeating it. Indeed, the legal character of a document issued by the EPO (such as the letter of 24 May 2012) cannot be determined or altered by actions, or inaction, by the EPO after it has been issued. Thus the Appellant's argument that the letter of 24 May 2012 is to be considered as a decision because the EPO did not subsequently issue a further document in this matter is to be rejected. Moreover, under no circumstances is an Examining Division empowered to decide on the "validity", i.e. the admissibility of a (notice of) opposition. As the Appellant itself put it in its letter dated 25 October 2012: the Examining Division is clearly and simply the wrong instance for such a decision.

3. Article 107, first sentence, EPC provides that any party to proceedings adversely affected by a decision may appeal. This provision thus contains the requirement that there was a decision. As in the given circumstances the letter sent by the Formalities Officer on behalf of the Examining Division did not constitute a decision within the meaning of Article 106(1) EPC any appeal against that letter is inadmissible.

4. As set out in point 3 above, the Board has concluded that there was no decision. Thus the Appellant is not a person entitled to appeal under Article 107 EPC, and hence its appeal must be rejected as inadmissible in accordance with Rule 101 EPC.

[...]

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

[...]

Epilogue
           
The applicant paid the fee for grant and publishing, together with the fee for further processing, on 20.07.2012, and filed a new divisional (the fifth out of this application) on the same date.
A new decision to grant was issued on 18.10.12, indicating that the mention of the grant would be published in the European Patent Bulletin of 14.11.12.
Two oppositions were filed on 13.08.13, one day before the end of the opposition period - one by the same opponent as the above Appellant, one by another opponent.
The dominos keep on falling...

This decision has European Case Law Identifier:  ECLI:EP:BA:2013:J002212.20131107. The whole decision can be found here. The file wrapper can be found here. Photo by Jacqui Brown
obtained via Flickr.

Note: we usually discuss decisions that were made available online on the EPO website in the last week or so before our blog, whereas the above decision was put online on 07.04.14, shortly before we started to blog at a regular pace. However, I consider the above decision a quite unusual one, and therefore decided to put it on the blog.

3 comments :

  1. I very much doubt the correctness of the ED's decision to rectify its decision to grant.

    As far as I understand, the applicant had tried to delay the grant decision by not paying the grant and publishing fees. The EPO mistakenly considered those fees to have been paid and proceeded to issue the grant decision. How does this "negatively affect" the appellant within the meaning of Art. 107 EPC?

    I understand that this is not what he wanted, but legally speaking he got exactly what he wanted, i.e. requested. Imho, an applicant not paying a fee does not have a legal right to be confronted with the consequences of not paying that fee.

    ReplyDelete
  2. In this case, I would consider paying the fee a legal act. Rule 71(5) EPC explicitly provides that "If the applicant (...) pays the fees (...) and files the translations (...), he shall be deemed to have approved the text communicated to him (...)."

    So if the fee is not paid, the decision to grant cannot take place. In this case the fee for grant was debited from an debit order that was canceled almost 6 year earlier. The applicant suffered adverse effects, as he could no longer file divisional. The ability to file divisionals is applicant right that was thus taken away.

    I think the EPO was correct to rectify their decision to grant.

    ReplyDelete
  3. In this case the applicant explicitly approved the text proposed for grant with his letter of 31.01.12, so I don't think Rule 71(5) EPC comes into play. As far as I can tell, the decision to grant complied with Art. 113(2) EPC.

    A party is not adversely affected by a decision within the meaning of Art. 107 EPC if the decision is consistent with its requests (J 12/85). Not being able to file a divisional anymore is therefore not an adverse effect, but merely a consequence of the decision. If this were different, any decision to grant would adversely affect an applicant: whether losing the right to file a divsional is adverse or not within the meaning of Art. 107, resulting in the decision being appealable or not, cannot be dependent on the subjective intentions of the applicant. (See also T 591/05, point 2.4; the facts are not identical though.)

    One could try to base an argument on Rule 71a(1) ("The decision to grant the European patent shall be issued if all fees have been paid, ..."), but I am not convinced that a decision issued in violation of this provision in itself negatively affects the applicant. But I simply have difficulty accepting that an applicant is entitled to benefit from not paying a fee and maybe one day I will be proven wrong. :-)

    The decision to grant of 16.02.12 correctly indicated the date of the mention of the grant as 14.03.12. So in principle the applicant could still have filed a divisional. From the e-mail correspondence of 02.04.12 it appears however that the applicant received this decision only on 16.03.12 (which seems unrelated to the fee situation). Assuming this is indeed the case (i.e. the EPO is not able to prove otherwise), then the applicant certainly has a valid reason to be annoyed.

    This must have happened before (it seems less exotic than the incorrect debiting), but I am not aware of any decisions dealing with this situation.

    J 7/96 explains that the date of notification of the grant decision is the date on which the grant takes legal effect between the EPO and the applicant and on which the text of the patent becomes res judicata. The publication of the mention of the grant is what makes the grant take legal effect with respect to third parties. It seems to me that a patent cannot have legal effect with respect to third parties before the date on which its text becomes final, so that a publication of the mention of the grant preceding the notification of the grant decision is without legal effect. If that is correct, the EPO could (and should) delete the mention of the grant and re-issue it without an appeal being necessary.

    ReplyDelete

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