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.
