This opposition appeal played a role in a series of court cases explained in an article by Gordon Harris. The appeal before the EPO is interesting in its own right. We have also blogged about this case in the context of the unitary patent.
The request for grant form for the patent contained the following: "GB is expressly NOT designated in this application.
" However, it appears that the EPO overlooked this statement and granted a patent for GB anyway.
The opponents challenge this grant for a member state that seems explicitly abandoned, both with the opposition division and with the Examining division; the latter under R.140 EPC.
However, the Board of appeal does not allow the opposition division to correct an error in a decision of the Examining division. The Examining division did not correct this 'error' either. This leads the way to court cases in which the proprietor tries to enforce the GB validation. In the end, the latter is unsuccessful but only because the patent is considered not infringed. Also the judge would not review the administrative procedure leading up to the grant.
I've put error in quotes since the board does not address the question whether this grant really was
an error. The Examining division itself does not seem to think so; in a communication of 17/4/2009 it considers the abandonment of the UK designation to ambiguous.
Summary of Facts and Submissions
I. All parties, the
patent proprietors (henceforth "Virgin"), opponents 01 (henceforth
"Cathay"), opponents 02 (henceforth "Airbus") and opponents 03
(henceforth "Premium") appealed against the interlocutory decision of
the Opposition Division dated 18 June 2009. In its decision the
Opposition Division maintained the patent in amended form on the basis
of the claims of the first auxiliary request then on file.
II. In
the course of the oral proceedings held 9 September 2010 before the
Board, Virgin withdrew all former requests and filed a new sole request
and requested that the decision under appeal be set aside and that the
patent be maintained in amended form on the basis of this sole request.
Premium
and Airbus requested that the decision under appeal be set aside and
that the patent be revoked. This request had also been made in writing
by Cathay, who informed the Board with letter dated 1 September 2010
that they would not be represented at the oral proceedings.
Premium
further requested the correction of the decision to grant by deleting
the designation of GB. This request had also been made by Cathay in
writing.
(...)
Reasons for the Decision
(...)
7. Request for correction of the decision to grant under Rule 140 EPC
Premium
and Cathay requested the Board to correct the decision to grant under
Rule 140 EPC by deleting the designation of the Contracting State GB
since in their view, said designation contained an obvious mistake.
Premium
and Cathay assert that it lies within the competence of the Opposition
Division to correct the Examining division's decision to grant a patent
pursuant to Rule 140 EPC (identical with former Rule 89 EPC 1973).
However, the present Board agrees with Virgin and believes that only the
Examining Division is entitled to correct its own decision.
Rule
140 EPC reads as follows: "In decisions of the European Patent Office,
only linguistic errors, errors of transcription and obvious mistakes may
be corrected."
The Board agrees with Premium and Cathay that Rule
140 EPC does not specify the competence to correct errors in a
decision. The Board also notes that there is no other provision in the
EPC specifying the competence for such a correction decision.
Therefore,
an interpretation of Rule 140 EPC is necessary on this issue. The case
law of the Enlarged Board of Appeal and the Boards of Appeal has dealt
with the question of which EPO department of first instance is competent
to correct the decision for grant. In its decision G 8/95 (OJ EPO 1996,
481) the Enlarged Board of Appeal held: "The competence to correct
errors in a decision under Rule 89 EPC [1973] lies with the body which
has given the decision. Hence, in the examination procedure the
Examining Division has to decide on a request to correct errors in the
decision to grant." (Reasons 3.4). In the decision T 850/95 (OJ EPO
1996, 455) leading to the referral,
the facts indeed differed from those
of the present case since the request for correction was submitted
prior to the mention of the grant of the patent and therefore prior to
the date on which the decision to grant took effect according to Article
97(4) EPC 1973. Consequently, no opposition proceedings were pending at
the time when the request for correction was filed. However, according
to the case law of the Boards of Appeal, the Examining Division has the
competence to correct its own decision to grant also in situations where
the request for correction was submitted after the initiation of
opposition proceedings (T 226/02 and T 268/02, both decisions not
published in the OJ EPO). In both decisions the Board referred to G 8/95
(loc. cit.) and held that the competence to correct errors in a grant
decision lied with the Examining Division which had taken that decision.
In T 226/02, where the Opposition Division had corrected the grant
decision pursuant to Rule 89 EPC 1973, the Board came to the conclusion
that "the Opposition Division acted ultra vires in taking a decision
under Rule 89 EPC [1973] to correct a decision of the Examining
Division" (Reasons 5.1). In decision T 79/07 (not published in the OJ
EPO) the Board acknowledged the Examining Division's competence for
correcting the grant decision even after the Opposition Division had
revoked the patent by a decision which was the subject of the appeal
proceedings.
In the Board's view the reason for acknowledging the
Examining Division's exclusive competence to decide on a request for
correction of the grant decision could be seen in the requirement
developed by case law that the correction of a decision is admissible
only if the text of the decision is manifestly other than intended by
the department concerned. Hence there is an obvious mistake in a grant
decision within the meaning of Rule 140 EPC, if the text given for grant
is not and obviously cannot be what the Examining Division actually
intended, and the text erroneously indicated can be replaced by that on
which the Examining Division actually wanted to base its decision (see T
850/95, loc. cit., Reasons 3. and T 1093/05, Reasons 7.).
Premium
argue that, in accordance with Article 114(1) EPC 1973, the Opposition
Division had to correct the grant decision since, as stated in decision T
156/84 (OJ EPO 1988, 372), it had the duty vis-à-vis the public not to
grant or maintain patents which were not legally valid, irrelevant of
how and when the EPO became aware of the circumstances being relevant
for the legal validity of a patent. The Board, however, does not agree
with this argument. The principle of examination by the EPO of its own
motion as set out in Article 114(1) EPC 1973 applies in all proceedings
before the EPO. However, this principle cannot justify acting ultra
vires and it therefore only applies to the extent to which the EPO
department acts within its competence. This finding is also in line with
decision T 156/84 (loc. cit.). The Board of Appeal concluded there that
for establishing whether a granted patent can be maintained the
Opposition Division was obliged to examine the relevance of cited state
of the art even if it was introduced after expiry of the opposition
period because the principle of examination by the EPO of its own motion
(Article 114(1) EPC 1973) took precedence over the possibility to
disregard late-filed facts or evidence (Article 114(2) EPC 1973).
Decision T 156/84 (loc. cit.) concerned the question of how the
Opposition Division had to deal with late-filed evidence which was filed
in support of the ground for opposition under Article 100(a) EPC 1973.
However, there is no indication in decision T 156/84 (loc. cit.) that
Article 114(1) EPC 1973 could establish any competence. Consequently,
neither Article 114(1) EPC 1973 nor decision T 156/84 (loc. cit.)
provides a basis for a competence of the Opposition Division for
correcting the grant decision.
Lastly, the Board turns to the
argument that the principle of good faith and the principle of
proportionality, which were applicable pursuant to Article 125 EPC 1973
in proceedings before the EPO, would establish a competence of the
Opposition Division for correcting the grant decision. The purpose of
Article 125 EPC 1973 is to fill any gaps that may occur in the
application of the procedural provisions of the EPC. However, the Board
considers that these principles also do not establish a competence of
the Opposition Division to correct the grant decision for the following
reasons.
According to Article 19(1) EPC 1973 the Opposition
Divisions are responsible for the examination of oppositions against any
European patent. The substantive examination of the opposition is
prescribed in Article 101 EPC. If the opposition is admissible, the
Opposition Division examines whether at least one ground for opposition
laid down in Article 100 EPC 1973 prejudices the maintenance of the
European patent (Article 101(1) EPC).
Article 100 EPC 1973 lays
down the exclusive grounds for opposition being limited to and
essentially the same as some grounds for revocation under national law
(Article 138(1)(a)-(c) EPC 1973). The function of this provision is to
provide, within the framework of the EPC, a limited number of legal
bases, i.e. a limited number of objections on which an opposition can be
based (G 1/95, OJ EPO 1996, 615, Reasons, point 4.1). An incorrect
designation of a Contracting State is not one of the grounds for
opposition under Article 100 EPC 1973. This has also not been disputed
by Premium and Cathay. It is established Board of Appeal case law that
further grounds which would lead to a refusal of a European patent
application in the examination proceedings cannot be successfully
presented in opposition proceedings (see for example G 1/91, OJ EPO
1992, 253; J 22/86, OJ EPO 1987, 280, Reasons, point 18; T 99/85, OJ EPO
1987, 413, Reasons, point 4; T 127/85, OJ EPO 1989, 271; T 301/87, OJ
EPO 1990, 335, Reasons, point 3.3 and 3.4; T 550/88, OJ EPO 1992, 117,
Reasons, point 4; T 428/95, not published in the OJ EPO, Reasons, point
4.2).
In view of this established case law and the relevant EPC
provision, the Board considers that the opposition procedure is not
designed to remedy all possible deficiencies of the granting procedure
or of a granted patent. For example, an objection on the basis that the
granted patent claims are not concise and clear cannot be considered by
the Opposition Division (see for example T 336/96, not published in the
EPO). Also defects and errors of a purely formal character in the
granting procedure cannot lead to a revocation of the patent in
opposition proceedings since such defects are properly regarded as cured
by the act of grant (J 22/86, loc. cit., Reasons 18.). Hence the scope
of opposition proceedings is limited as regards the grounds for
challenge to granted European patents.
Also after grant
observations of third parties under Article 115, first sentence EPC are
only admissible if they oppose the patentability of the invention to
which the patent relates. "Patentability" refers only to the substantive
requirements set out in Articles 52 to 57 EPC as the identical heading
of Chapter I, Part II of the EPC suggests.
The provisions of
Articles 99 et seq. and Article 115 EPC were drafted with the public
interest in mind (see also T 60/91 (OJ EPO 1993, 551, Reasons 9.5).
Therefore, in inter partes opposition proceedings before the EPO account
must not only be taken of the interests of the parties involved. The
Board shares the view that the EPO also has a duty vis-à-vis the public
not to grant or maintain patents which it is convinced are not legally
valid and that the public has to be enabled to rely as far as possible
on the legal validity of a patent granted by the EPO (see T 156/84, loc.
cit., Reasons 3.5). However, this duty is subject to restrictions. As
set out above, opponents in opposition proceedings and third parties
filing observations can challenge the patent only in a limited scope.
This means that neither the public nor opponents have legitimate
expectations that any deficiency of the granted patent would be remedied
by the EPO. Consequently, in the present case, the public could not
legitimately expect that the designation of the Contracting State GB
would be corrected in opposition proceedings. Therefore, the principle
of good faith does not apply in the present case.
For similar
reasons the principle of proportionality does not apply in the present
case. It is obvious from the EPC provisions concerning post-grant
proceedings that the legislator did not envisage empowering the
Opposition Division to set aside all legal and factual consequences of
any mistake which occurred in examination proceedings. It is therefore
the Board's view that the authority conferred to the Opposition Division
by the EPC provisions cannot be extended because of the principle of
proportionality.
In view of the above the Board concludes that in
the present case the Opposition Division in opposition proceedings had
no competence to correct the decision taken by the Examining Division.
Thus the Opposition Division would have acted ultra vires if it had
corrected the grant decision. The same applies to the Board of Appeal in
opposition appeal proceedings (Article 111(1), second sentence EPC
1973). Consequently, the request for correction of the decision to grant
must be rejected.
ORDER
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the following documents:
- Claims 1 to 8 filed as sole request during the oral proceedings;
- Pages 2 to 8 of the description filed during the oral proceedings;
- Drawings as granted.
3. The request for correction of the decision to grant is rejected.
This decision has European Case Law Identifier: ECLI:EP:BA:2010:T149509.20100909
. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "The Queen's Guards
" by Swaminathan obtained via 500px under CC BY 3.0 license (no changes made).
