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in 2005 [albeit the automatic debit order was revoked per 26.10.05 - the latter was however overlooked by the EPO].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.
