Tuesday, April 12, 2016 R 0013/14 - No, no, and again no on relocating the oral proceedings

This petition for review by the Enlarged Board of Appeal under Art 112a(c) and (d) EPC, results from an earlier decision T 1142/12 that was discussed in our DeltaPatents case law blog in June 2014 (read more). The petitioner is of the opinion that the Board of Appeal did not decide on two requests that the petitioner found relevant, namely those that dealt with relocating the location of the oral proceedings from The Hague to Munich. The Enlarged Board of Appeal (in its 5 member composition) thinks otherwise. The EBoA indicates that at first glance, when reading that the BoA held that it was not empowered to refer a question to the Enlarged Board, it could be concluded that the BoA did not decide on this particular request. However, the EBoA is of the opinion that the BoA said that this request was to be “rejected” for the same reason as given for the refusal to challenge the request for relocation of the oral proceedings. According to the EBoA: Whatever the terminology used, the fact remains that the request was rejected, i.e. a decision was made.

Tuesday, October 06, 2015 T 0083/05 - Broccoli III the final

This decision concerns the patent application directed to a broccoli plant with elevated levels of anticarcinogenic glucosinolate derivatives, that was the result of crossing different known broccoli plants and using genetic markers that indicated elevated levels of such glucosinolate derivatives. It is the final of a long lasting case going through two rounds of Enlarged Board of Appeal decisions: Broccoli I (G2/07) and Broccoli II (G2/13, case law blog: here). See also the Tomatoes I and II decisions that concerned similar issues and that were co-decided by the Enlarged Board. 
In this particular decision (which was named Broccoli III) the Board of Appeal reacts to the ruling of the Enlarged Board in G2/13 and of course adapted to that ruling by finding that the claims directed to 'an edible Brassica plant produced according to a method for the production of Brassica oleracea with... etc.'  fulfills the requirements of the EPC. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts. There is nothing unexpected about this particular decision, but it is important because it generated such important case law.

Smmary of Facts and Submissions

I. Both opponent 01 (appellant I) and opponent 02 (appellant II) filed appeals against the interlocutory decision of the opposition division maintaining European patent No. 1 069 819 in amended form.

II. The appellants submitted that the patent as amended and the invention to which it related did not meet the requirements of the EPC. They relied in particular on the opposition grounds of added subject-matter, lack of enabling disclosure, lack of novelty, lack of inventive step and that the subject-matter of the method claims was not patentable pursuant to Article 53(b) EPC.

III. During the first oral proceedings before this board (albeit in a different composition), the patent proprietor (respondent) submitted a new main and auxiliary request. Claims 1 to 4 of the main request were directed to a method for the production of Brassica oleracea with elevated levels of particular glucosinolates comprising a number of steps of crossing, selecting and backcrossing.

The other claims of the main request were all independent and read as follows:

"5. An edible Brassica plant produced according to the method of any one of claims 1 to 4.

Tuesday, May 05, 2015 Online consultation on reforms to the EPO boards of appeal

The European Patent Organisation has launched a structural reform of its Boards of Appeal. 

The main features of the proposed reform are described in the document (CA/16/15), which has been presented by the President of the European Patent Office to the Administrative Council in March and has met with broad support. The Council gave its general support to the policy lines as presented. First concrete proposals will be elaborated for decision at the next Council meeting, in June 2015. These proposals will have to take due account of contributions received as a result of a broad consultation of stakeholders. The user consultation was launched on 30 April and will run until 30 June 2015.

The aim of the reform is to ensure and increase the organisational and managerial autonomy of the Boards of Appeal, the perception of their independence as enshrined in Article 23 EPC, as well as their efficiency within the legal framework of the current European Patent Convention.

The aim is also to take account of national, European and international developments aiming at enhancing the autonomy of the Judiciary and/or the efficiency.

The European Patent Office, which will prepare the relevant concrete proposals to be submitted to the Administrative Council, would welcome contributions from the users of the European patent system concerning possible improvements of the functioning of the Boards of Appeal with respect to both their autonomy and the perception of their independence and their efficiency. Contributions from the users will be duly considered in the preparation of the future concrete proposals and presented to the Administrative Council. Contributions will be processed and presented to the Administrative Council in an anonymised manner and an excerpt of the contributions will be made available to the general public.

The EPO in particular welcomes contributions concerning the following questions:

• Question A: Position of the Boards of Appeal – Independence
• Question B. Work of the Boards of Appeal - Efficiency
• Question C. Work of the Boards of Appeal – Procedure 
• Question D. Boards of Appeals Committee (BOAC)
• Question E. Proceedings of petitions for review
• Question F. General

The user consultation will run until 30 June 2015, and is available to June 30, 2015 on the EPO website under https://forms.epo.org/law-practice/consultation/ongoing/boards-of-appeal-form.html.

Source: EPO website, Ongoing User Consultations, https://forms.epo.org/law-practice/consultation/ongoing/boards-of-appeal-form.html and http://www.epo.org/news-issues/news/2015/20150430.html 

Friday, March 27, 2015 G 2/12 and G 2/13 - Fruit and veggies

On 25 March 2015 the Enlarged Board of Appeal published the consolidated decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). Whereas the EBoA decided in G 1/08 (Tomatoes I) and G 2/07 (Broccoli I) that the processes as claimed in the respective patents at stake were not allowable under Article 53(b) EPC (that indicates that plants and plant varieties or essentially biological processes for the production of plants are unpatentable), the EBoA now came to the (not unexpected) conclusion that this article in the EPC does not prevent patenting the plant products (e.g. fruit and edible parts of the plant) that may be obtained by such processes. Interestingly, all parties involved (patent proprietors, opponents as well as the President of the EPO) agreed with this notion, before the EBoA confirmed it.
The EBoA once again stresses the difference between a product claim, a process claim and a product-by-process claim, the latter being a product claim that should be addressed for patentability separate from the process that is used to produce it.

The EBoA concluded earlier in G 2/07 and G 1/08 that the legislator's intention (Article 53(b) EPC) had been to exclude from patentability those plant breeding processes which were the conventional methods of plant-variety breeding at the time. 
Article 53(b) EPC is about an essentially biological process that cannot be patented. But if one claims a product (not a plant or a plant variety) that may be obtained by such excluded process, such product may very well be patentable and is explicitly not excluded from patentability under Article 53(b) EPC, solely because it was obtained by the unpatentable process.  

Notably, and the EBoA admits this, in some EPC contracting states, including Germany and the Netherlands, the patent law deviates from the EPC by explicitly excluding patentability of products obtained by essentially biological processes (e.g. see Art. 3(1)(d) ROW 1995). The EBoA indicates that such is not the case in the EPC.

Ergo: not all is lost for parties pursuing European patent protection for commercial plant products (like fruit) when the process leading to such products falls under the exclusion of Article 53(b) EPC, at least not in all contracting states of the EPC.

Saturday, May 10, 2014 G 1/12 - Water filtration using immersed membranes/Zenon Technology Partnership - Admissibility of the referral

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.  

Thursday, May 08, 2014 G 1/12 - Water filtration using immersed membranes/Zenon Technology Partnership

Mistaken identity 

My Wife and My Mother-in-Law", a famous optical illusion. Appears in Puck, v. 78, no. 2018 (1915 Nov. 6), p. 11

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 main decision. In a subsequent blog we will deal with the admissibility of the referral, where, very unusual, the Enlarged Board could not agree and a minority held the case as inadmissible.

Background of the case

A European application was granted and had been  filed on 18 November 1999 in the name of ZENON ENVIRONMENTAL INC as a PCT application. The patent, once granted, was assigned to Zenon Technology Partnership on 30 May 2006. The transfer of ownership was registered by the EPO with effect from 10 February 2007. An opposition was filed by Siemens Industry, Inc.

The opposition division revoked the patent by a decision dated 28 December 2007. The name of the patent proprietor was correctly cited in the decision as Zenon Technology Partnership.

On 7 March 2008 the Registrar of the Board sent a communication notifying the parties of the commencement and the reference number of the appeal proceedings. This communication bore the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC. The patentee is here registered as Zenon Technology Partnership. Therefore the patentee is asked to clarify the situation".

In response, Zenon Technology Partnership sent a letter dated 13 March 2008 and received on 17 March 2008 confirming that "the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership" and requesting correction of this error; this being the true intention.

The opponent (respondent) challenged the admissibility of the appeal on the ground that it had been filed by a company ZENON ENVIRONMENTAL INC. which was not the registered patent owner. The actual patent owner, namely Zenon Technology Partnership, and the company ZENON ENVIRONMENTAL INC., which had filed the appeal, were two different entities and therefore the second company was not entitled to file an appeal in the place of the registered patent owner. Correction of the identity could have been possible under R.101(1), but that option had expired [before the relevant period under Article 108 EPC had expired].. Correction under R.101(2) only covered correction of formal deficiencies (e.g. such as a wrong spelling or a wrong address). The respondent also held that a correction under R.139 was also not possible because that rule was a general provision over which the specific rules governing the appeal proceedings took precedence according to the general principle of law that "lex specialis generalibus derogat".

The Board of Appeal investigated the case law and decided to refer four questions to the Enlarged Board.

The decision

The answers to the referred questions were (here in a form where the Enlarged Board had rephrased the first question):

Reformulated question (1)  When  a notice of appeal, in compliance with Rule 99(1)(a) EPC,  contains the name and the address of the appellant as provided  in Rule 41(2)(c) EPC and it is alleged that the identification  is wrong due to an error, the true intention having been to  file on behalf of the legal person which should have filed the  appeal, is it possible to correct this error under Rule 101(2)  EPC by a request for substitution by the name of the true  appellant ?

Answer:  yes, provided the requirements of Rule 101(1)  EPC have been met.

Question (2): If the answer is yes, what kind of evidence is to be considered to establish the true intention?

Answer: Proceedings before the EPO are conducted in accordance with  the principle of free evaluation of evidence. This also  applies to the problems under consideration in the present  referral. 

Question (3) If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?

Answer: In cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence,  EPC is available under the conditions established by the case law of the boards of appeal.

Question (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

Answer: Given the answers to questions (1) and (3), there is no need to answer question (4). 

Reasons for the Decision

(…)

20. (…) Given that it is explicitly required that the notice of appeal identify the appellant (name and address), it is clear that status as a party to the proceedings has to be established within the two-month period under Article 108, first sentence, EPC, this being the relevant period within the meaning of Rule 101(1) EPC. Otherwise, the appeal will be found inadmissible "... unless any deficiency has been remedied before the relevant period under Article 108 [EPC] has expired." In other words, the identity of the true appellant, i.e. the person on whose behalf the appeal was actually filed, must be established by expiry of the two-month period prescribed in Article 108, first sentence, EPC at the latest. 

22. In contrast, Rule 101(2) EPC states that, if the board of appeal finds that the appeal does not comply with Rule 99(1)(a) EPC, it must inform the appellant accordingly and request him to remedy the deficiencies noted within such period as it may specify. If those deficiencies are not corrected in good time, the board shall reject the appeal as inadmissible. Rule 101(2) EPC, which concerns the procedure for correcting the appellant's name and address to meet the requirements under Rule 41(2)(c) EPC, may be applied where there is a deficiency in the notice of appeal, statement setting out the grounds of appeal or any document subsequently produced by the appellant (which is clear from the term "appeal" in Rule 101(2) EPC, which has to be interpreted to mean "the appeal as a whole" - see T 715/01, loc. cit., Reasons No. 10), provided the appellant's identity has already been established within the two-month period as set out above. In other words, it applies to deficiencies which do not affect the establishment of the true appellant's identity as such, e.g. spelling errors or incomplete indication of the appellant's name. 

24. In the boards' case law, Rule 101(2) EPC (formerly Rule 65(2) EPC 1973) has been interpreted so as to allow for a correction of the appellant's identity, under the conditions set out there and within a period to be specified in the communication, after expiry of the appeal periods prescribed in Article 108 CBE. 

25. This case law was established in three decisions cited in the referral: T 340/92, loc. cit., T 1/97, loc.cit., and T 97/98, loc.cit.; it has been followed in several other decisions, which, as a rule, cited T 97/98, the decision published in the EPO's Official Journal. 

The rationale for this case law is as follows:

26. According to Rule 99(1)(a) EPC, the notice of appeal must contain the name and address of the appellant in accordance with the provisions of Rule 41(2)(c) EPC. Besides the administrative purposes, the purpose of this provision is to ensure that the appellant can be identified and so make it possible to establish whether or not the appeal was filed by a party to the proceedings within the meaning of Article 107 EPC (see T 97/98, loc. cit., Reasons No. 1.3). Deficiencies including the need for substitution of the name of the indicated person by another and omissions regarding the appellant's name or address may be remedied under Rule 101(2), first sentence, EPC by invitation of the board of appeal, even after expiry of the two-month time limit under Article 108 EPC (see T 1/97,loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). However, according to the boards' case law, the correction of the deficiency or the omission is possible only if it "does not reflect a later change of mind as to whom the appellant should be" (see T 97/98, loc. cit., Reasons No. 1.3), i.e. the appellant must be sufficiently identifiable within this period for filing an appeal (see T 1/97, loc.cit., Reasons No. 1.1, and T 97/98, loc. cit., Reasons No. 1.3). This is the case if "it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed" (T 97/98, loc. cit., Reasons No. 1.3; see also T 1/97, loc.cit., Reasons No. 1.1 and the other decisions cited there).

27. In other words, an incorrect designation of the appellant in the notice of appeal may be corrected under Rule 101(2) EPC, provided that the appellant was identifiable, i.e. the provisions on the adversely affected party in Article 107 EPC and Rule 101(1) EPC were met, on expiry of the two-month period, so that the correction only expresses what was intended when the appeal was filed within that period. 

28. From the rationale of T 97/98 it follows that, in the event of a deficiency as to the appellant's identity, the board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file, i.e. ascertain who must be deemed in all likelihood to have filed the appeal and, consequently, replace the name indicated in the appeal with that of another natural or legal person. 

29. The Enlarged Board fully endorses this case law, in which it is considered that an incorrect indication of the appellant's identity is a deficiency which can be remedied, provided "its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal" (see T 97/98, loc. cit., Reasons No. 1.3). As is well-established case law, the board may point out the deficiency in the communication under Rule 101(2) EPC, which relates to deficiencies in the name and address given in the notice of appeal or also the statement setting out the grounds of appeal.The Enlarged Board has no reason not to allow correction in response to a Rule 101(2) EPC communication pointing out deficiencies as to the appellant's name and address. In response to such a communication the original indication of the appellant's identity may be brought in line with its correct name, for example by way of a request to correct a wrongly quoted name by replacing it with the true appellant's correct name. It goes without saying that evidence of the true intention as to who is the natural or legal person on whose behalf the appeal was intended to be filed must be produced and evaluated by the board concerned. This is also in line with the relevant ruling in G 2/04 (loc. cit., Reasons No. 3.1). The Enlarged Board therefore has no reason to deviate from the case law followed by the boards.

30. Thus, the answer to question (1), as reformulated above - namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met. 

31. Question (2) "If the answer is yes, what kind of evidence is to be considered to establish the true intention?"  The referred question concerns what kind of evidence is needed to establish true intention. In general terms, it must be emphasised that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration here. As the Enlarged Board of Appeal pointed out in G 3/97 (OJ EPO 1999, 245, Reasons No. 5) and G 4/97 (OJ EPO 1999, 270, Reasons No. 5), "(t)he principle of free evaluation would be contradicted by laying down firm rules of evidence defining the extent to which certain types of evidence were, or were not, convincing". The Enlarged Board of Appeal sees no reason not to apply this principle in the present case and to provide guidance on its application. 

32. Question (3)  "If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC ?" 

Even though the answer to question (1) was yes, the Enlarged Board of Appeal wishes to respond to question (3) on whether Rule 139, first sentence, EPC can apply if the name of the appellant was incorrect and the correction to be allowed involves "substitution" of the appellant, a question on which the appellant (patentee) and the respondent (opponent) have commented extensively and argued in support of differing points of view.

33. First of all, it is important to point out that Rule 139 EPC provides for the correction of errors indocuments filed with the EPO. This appears in Chapter VI of Part VII of the Implementing Regulations to the EPC, which covers Rules 137 to 140 EPC. Part VII of the Implementing Regulations relates to Part VII of the EPC (Articles 113 to 134a EPC), which is headed "Common provisions".

34. Rule 139, first sentence, EPC allows the correction of "linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office". This list and the rule's heading ("Correction of errors in documents filed with the European Patent Office") make clear that the rule deals with cases in which an error of expression in a declaration has occurred or a mistake in a document is the consequence of an error.

35. Since it applies to any document filed with the EPO, the Enlarged Board of Appeal sees no reason why it should not apply to appeals.

36. The first sentence of Rule 88 EPC 1973, or now (with the same wording) of Rule 139 EPC, applies generally (see J 4/85, OJ EPO 1986, 205, and subsequent case law). This follows clearly from the EPC structure as intended by the legislator, Rule 139 EPC having been left in the part relating to "Common provisions", where it had already been in the EPC 1973.

37. The boards of appeal, in particular the Legal Board of Appeal, have developed a large body of case law on corrections under the first sentence of Rule 88 EPC 1973 (first sentence of Rule 139 EPC) and established the following principles:

(a) The correction must introduce what was originally intended. For example, an applicant wishing to add a designation not originally intended on filing cannot rely on the first sentence of Rule 88 EPC 1973 (J 8/80, OJ EPO 1980, 293, in particular Reasons No. 7). The possibility of correction cannot be used to enable a person to give effect to a change of mind or development of plans (J 8/80, loc. cit., Reasons No. 6; J 6/91, OJ EPO 1994, 349). It is the party's actual rather than ostensible intention which must be considered.

(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one (J 8/80, loc.cit., Reasons No. 6).

(c) The error to be remedied may be an incorrect statement or an omission.

(d) The request for correction must be filed without delay.

Furthermore, an allowable correction under Rule 139 EPC has retrospective effect (J 4/85, loc. cit., Reasons No. 13; as endorsed in several subsequent decisions, for example J 2/92, OJ EPO 1994, 375, Reasons No. 5.2.2; J 27/96 of 16 December 1998, Reasons No. 3.2; J 6/02 of 13 May 2004, Reasons No. 2; J 23/03 of 13 July 2004, Reasons No. 2.2.1 and J 19/03 of 11 March 2005, Reasons No. 3).

38. Consequently, if correction of the error is allowed, the appeal will be found admissible and the condition of Article 107 EPC will have been satisfied within the two-month period according to Article 108, first sentence EPC.

39. The Enlarged Board of Appeal cannot subscribe to the argumentation put forward by the respondent (opponent) according to which, applying the general principle of lex specialis derogat legi generali, only Rule 101 EPC is applicable, since this is "lex specialis" in relation to Rule 139 EPC, which has to be considered "lex generalis". Leaving aside the explanations set out above, the Enlarged Board of Appeal cannot find in the wording of Rule 139 EPC any indication that this generally applicable provision refers to exceptional provisions. The EPC drafters did not in the wording of Rule 139 EPC make use of any introductory or final formula which, by definition, would have referred to a specific provision excluding the general provision. This is the case, for example, in Rule 100(1) EPC (formerly Rule 66(1) EPC 1973), which provides that the provisions relating to proceedings before the department which has taken the decision impugned apply to appeal proceedings, "unless otherwise provided". In this respect, in G 6/95 (OJ EPO 1996, 649) the Enlarged Board of Appeal decided that the provisions of Rule 71a(1) EPC 1973 (now Rule 116(1) EPC) relating to the first-instance procedure are not applicable within appeal proceedings, since the procedure before the boards of appeal is otherwise provided for, namely in the Rules of Procedure of the Boards of Appeal (RPBA). Other EPC provisions, for example Rules 5, second sentence, 109(1), first sentence, 131(2), second sentence, 132(2), first sentence and 137(1) EPC, refer to special provisions and clearly indicate that the legislator wanted to add to a general provision one or more special provisions "derogating" from it. It is clear that the legislator did not include in Rule 139EPC a formula permitting the conclusion that it included one or more specific provisions that derogate from the general provision. The Enlarged Board of Appeal concludes that Rule 139 EPC is generally applicable as indicated above. In its decision J 4/85 (loc. cit., Reasons No. 13) the Legal Board of Appeal moreover stated that another provision (in that case, Rule 43 EPC 1973) cannot supplement the provisions of Rule 88 EPC 1973. 

40. For the above reasons, the Enlarged Board of Appeal's response to question (3) is that, in cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available. The well-established case law of the boards of appeal on the application of Rule 88, first sentence, EPC 1973 and/or Rule 139, first sentence, EPC provides the necessary guidance on its application in the event of an error in the appellant's name.

41. Question (4) "If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?"

Given the answers to questions (1) and (3), there is no need to answer question (4). 

The whole decision can be found here. The file wrapper can be found here.

Monday, May 05, 2014 G 1/11 - Refund of search fees

Photo by Sharon Mollerus obtained via Flickr.

'This is an appeal against a decision of the Examination Division not to refund further search fees paid under Rule 64(2).

The applicant had paid four further search fees to cover a search after the search division found a-posteriori non-unity. The request of the applicant to refund the further search fees was granted  for two of the four search fees. However, for the other two search fees, the Examining division had denied the request in an appealable decision.

The applicant appealed the decision.
Initially the appeal was handled by technical board of appeal 3203. However, this board considered itself not competent on the basis of Article 21(3)(c). The case was thus forwarded to a legal board. [As far as I can see it, without hearing the appellant.]

Indeed a literal reading of Article 21(3) suggests that a technical board is not competent to hear this appeal. 

However, the applicant was not pleased with being forwarded to a legal board. Deciding on further search fees will require a decision on unity which implies a technical discussion. 

Indeed, common sense seems to dictate that technical discussions should be handled by technical boards. 

The legal board than asked an Enlarged Board of Appeal how to get out of this dilemma: follow the article or to be more pragmatic.  The enlarged board did the latter and gave the following headnote in its decision:


Headnote

Für die Behandlung einer Beschwerde gegen eine Entscheidung der Prüfungsabteilung über die Nichtrückzahlung von Recherchengebühren gemäß Regel 64(2) EPÜ, die nicht zusammen mit einer Entscheidung über die Erteilung eines europäischen Patents oder die Zurückweisung einer europäischen Patentanmeldung erlassen worden ist, ist eine Technische Beschwerdekammer zuständig.

This is my translation

A Technical Board of Appeal is responsible for appeals against a decision of the Examining Division regarding the non-repayment of search fees under Rule 64 (2) EPC, which was not made together with a decision on the grant of a European patent, or the rejection of a European patent application.

Read on to find out how the Enlarged board found a reading of Article 21 that makes a technical board competent.

Reasons for the Decision
 (...)

3. Eine Entscheidung nach Regel 64 (2) EPÜ erfordert die Beurteilung der Einheitlichkeit der in der Anmeldung - in aller Regel in deren ursprünglich eingereichten Fassung - beanspruchten Erfindung(en), und zwar nach den in Regel 44 (1) EPÜ dafür formulierten Kriterien, welche eine eingehende, technisch sachverständige Auseinandersetzung mit dem technischen Inhalt der Merkmale voraussetzen (Punkt V. i), oben). Deshalb wäre aus sachlichen und rechtlichen Erwägungen (siehe dazu unten) die Zuständigkeit einer Technischen Beschwerdekammer für solche Entscheidungen geboten.

Die Eindeutigkeit einer allein sachgerechten Lösung der Zuständigkeitsfrage vermag jedoch noch nicht die Zuständigkeit der Technischen Beschwerdekammer zu begründen, vielmehr ist darüber auf der Grundlage der dafür maßgeblichen Regelungen des EPÜ zu entscheiden. Was die Zuständigkeitsabgrenzung der Technischen und der Juristischen Beschwerdekammer anbelangt, ist es nicht statthaft, von einer klaren Entscheidung des Gesetzgebers abzugehen und einer eindeutigen gesetzlichen Regelung einen davon abweichenden Sinn zu geben, weil eine andere Regelung gewisse praktische Vorteile bietet - vergl. Entscheidung G 2/90 (ABl. EPA 1992,10, Pkt. 3.3 und 3.4). Dies gebieten nicht zuletzt auch die Auslegungsgrundsätze der Artikel 31 und 32 des Wiener Übereinkommens über das Recht der Verträge vom 23. Mai 1969 (siehe Entscheidungen G 1/83, Punkt 4 der Gründe und G 1/08, Punkt 4.3 der Gründe). Zu ihnen gehört, dass die vorbereitenden Unterlagen des Übereinkommens dann in Betracht gezogen werden können, wenn bei der Anwendung der Grundsätze die Bedeutung zu einem offensichtlich sinnwidrigen oder unvernünftigen Ergebnis führt (siehe Entscheidung G 1/83, Punkt 4 (5) der Gründe, Punkt 12 und 13, unten).

(...)

11. Im Gegensatz zur Regelung der Zuständigkeit der Technischen Beschwerdekammer in Artikel (21) 3) a) EPÜ findet sich im Wortlaut der Auffangregelung kein spezifisches, auf die angefochtene Entscheidung bezogenes Zuständigkeitskriterium und damit nichts, was zu einer Auslegung der Regelung zwingen oder auch nur darauf hindeuten könnte, dass die Auffangzuständigkeit der Juristischen Beschwerdekammer ausnahmslos selbst dann greift, wenn die Entscheidung über die Beschwerde im Hinblick auf die dafür erheblichen technischen Sachverhalte und Fragestellungen (auch) technischen Sachverstand erfordert. Auch sonst findet sich nirgends ein Hinweis, dass der Gesetzgeber
eine solche Fallkonstellation im Auge hatte, speziell nicht bei Beschwerden gegen Entscheidungen nach Regel 64 (2) EPÜ - was immer der konkrete Grund dafür gewesen sein mag (dazu plausibel, aber letztlich offen lassend die vorlegende Kammer, Punkt V. vi), oben).

12. Aus diesen Gründen umfasst die Auffangregelung des Artikel 21 (3) c) EPÜ nach ihrem Wortlaut in Verbindung mit den anderen Zuständigkeitsregelungen des Artikel 21 EPÜ und den sie bestimmenden sachlichen und rechtlichen Zielsetzungen nicht Entscheidungen über die Rückzahlung von Beschwerdegebühren nach Regel 64 EPÜ.
 
13. Damit sind Entscheidungen einer aus drei Mitgliedern zusammengesetzten Prüfungsabteilung, mit welchen die die Rückzahlung von zusätzlichen Recherchengebühren gemäß Regel 64 EPÜ verweigert wird, weder von Artikel 21 (3) a) EPÜ erfasst, da sie nicht die Erteilung oder Zurückweisung betreffen (Pkt. 5., oben), noch unterliegen solche Entscheidungen dem Artikel 21 (3) c) EPÜ, da sich die Überprüfung solcher Entscheidungen durch die Beschwerdekammer nicht auf rechtliche Kriterien beschränkt (Pkt. 10 und 11, oben). Auch sonst im EPÜ oder in den Geschäftsverteilungsplänen der Beschwerdekammern findet sich keine einschlägige Zuständigkeitsbestimmung. Damit besteht hinsichtlich der Frage, welche der beiden in Betracht kommenden Zuständigkeiten gegeben ist, eine planwidrige Unvollständigkeit der Vorschriften und somit eine Regelungslücke im Rechtssinn. Im Hinblick auf die dargestellten sachlichen und verfahrensökonomischen Zielsetzungen und Rechtsgrundsätze, welche der Regelung der Zuständigkeit der Beschwerdekammern, insbesondere auch der Zuständigkeitsverteilung zwischen Technischen Beschwerdekammern und Juristischer Beschwerdekammer, zugrunde liegen, ist diese Regelungslücke unschwer und eindeutig gemäß der nachstehenden Entscheidungsformel zu schließen. 


Entscheidungsformel
Aus diesen Gründen wird entschieden:

Die der Großen Beschwerdekammer vorgelegte Frage wird wie folgt beantwortet:
Für die Behandlung einer Beschwerde gegen eine Entscheidung der Prüfungsabteilung über die Nichtrückzahlung von Recherchengebühren gemäß Regel 64 (2) EPÜ, die nicht zusammen mit einer Entscheidung über die Erteilung eines europäischen Patents oder die Zurückweisung einer europäischen Patentanmeldung erlassen worden ist, ist eine Technische Beschwerdekammer zuständig.

The whole decision can be found here. The file wrapper can be found here.