Thursday, July 18, 2019 G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:

Haar, 17 July 2019 

Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 

2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.

Tuesday, March 26, 2019 T 0403/18 - Ad hoc move of oral proceedings from Haar to Munich

As reported earlier on this blog, the Enlarged Board of Appeal will have to decide whether or not the Boards of Appeal may properly summon parties to oral proceedings at their premises in Haar.

Alluding to this pending referral, in the present case T 0403/18 one of the parties present at an oral hearing in Haar requested that this hearing be held in Munich. As can be inferred from the minutes of this hearing (the written decision has not been published yet), with agreement of all parties the oral proceedings were indeed relocated to the former home of the Boards of Appeal in Munich, i.e. the Isar building at the Bob-van-Benthem-Platz:

"At the beginning of the oral proceedings at 09:00 hrs in the premises of Haar, the respondents relied on decision T 0831/17 of 25 February 2019 referring a question of law regarding the proper venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO's building at Bob-van-Benthem-Platz 1 (formerly Erhardtstrasse 27) in Munich starting at 13:00 hrs on the same date."

It will be interesting to see whether pending the referral to the Enlarged Board more Boards (possibly as a precautionary measure) will adopt the same approach.

Tuesday, March 05, 2019 T 0831/17 - Haar? Referral. [G 2/19]

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

Tuesday, June 24, 2014 T 1142/12 - A matter of organisational nature

Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?

In the decision that forms the subject of the present appeal, the request of the applicant to hold oral proceedings in Munich rather than in The Hague was refused on the grounds that according to Art. 18(2) EPC oral proceedings were to be held before the Examining Division itself and consequently had to be held at the location of the Examining Division to which the case was assigned. In the present case the responsible Examining Division was located in The Hague.

The decision was supported with reference to decision T 1012/03, Art. 10(1), (2)(a) and (b) EPC.

Oral proceedings before the Examining Division were held on 15 December 2011 at the EPO branch at The Hague in the absence of the applicant. The application was found not to meet the requirements of Art. 84, Art. 54 and 56 EPC.

The applicant lodged an appeal against the decision. In the statement of grounds, the appellant focused on the location of the oral proceedings. As main request, the applicant requested that the decision under appeal be set aside with the order to conduct oral proceedings at the EPO in Munich. As auxiliarily request, the applicant requested the following question concerning an important point of law be referred to the Enlarged Board of Appeal in accordance with Art. 112(1)(a) EPC:

"Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?"

Reasons for the Decision

(...)

1.2 In the present case, the issue relating to the competence of the Board to decide upon the question of the venue of oral proceedings is to be dealt with first, for the reason that if the Board came to the conclusion that it had no competence in this respect, the Board would also have no competence in matters subsidiary thereto or associated therewith, for example the referral of a question to the Enlarged Board of Appeal on that issue.

2. First auxiliary request

2.1 The crucial issue to be considered first is to determine who has the power to decide on the location of oral proceedings, namely, whether such a decision is in the hands of the Examining Division or in the hands of the management of the EPO.

2.2 The reasoning followed by the appellant is based on the assumption that the Examining Division had the power to decide on such a matter, or at least that in particular cases, especially where the applicant presented a request to hold oral proceedings in Munich instead of in The Hague with good reasons, such a request could not be refused.

2.3 This question is obviously of particular importance because on its answer depends the determination of the which body is empowered to review such a decision.

2.3.1 If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal.

2.3.2 Alternatively, if the decision on the venue of oral proceedings was within the competence of the management of the EPO and was thus within the power of the President of the European Patent Office then any challenge to such a decision by a party would in fact be directed against a regulation adopted by the President or somebody acting on his behalf, but not against a decision of the Examining Division and therefore would not fall within the competence of the Boards of Appeal.

2.4 Under the provisions of Art. 18(1) EPC the Examining Divisions are responsible for the examination of European patent applications.

2.5 Chapter IV of the Implementing Regulations relating to the examination by the Examining Division (R. 70a to 72 EPC) provides no indication as to the venue of oral proceedings.

2.6 The provisions of Art. 116(1) and (3) EPC relating to oral proceedings contain no mention as to where oral proceedings are to be held, nor do R. 115 and R. 116 EPC provide any such guidance.

2.7 As a matter of principle, in a democratic organisation, a given body cannot act outside its own sphere of competence as laid down by the applicable law, i.e. the EPC, otherwise its decision would be void.

2.7.1 Nowhere in the EPC can a provision be found suggesting that the Examining Divisions were entitled to decide on matters other than patent applications in accordance with the rules and principles laid down by the EPC.

2.7.2 As stated in decision T 1012/03, which is not contested by the appellant in his submissions in the present case, the practical aspects of the organisation of oral proceedings are a matter relating to the management of the EPO, which lies under the power of the President of the EPO as provided by Art. 10(2) EPC (see point 4 of said decision).

Accordingly the Examining Divisions are clearly not allowed to take a decision, whatever this would be, on this matter.

2.7.3 The mere decisional power of the first instance bodies as well as the Boards of Appeal on this issue extends to the point at which the decision to hold oral proceedings in a specific case is taken. By contrast, the place, the room and even the date are of organisational nature.

2.8 The contested decision based its reasoning on Art. 18(2) EPC.

2.8.1 Art. 18(2) EPC stipulates only before whom oral proceedings must be conducted, namely before the Examining Division. As correctly indicated by the appellant, this provision gives no indication as to the geographical location at which oral proceedings should be conducted and does not empower an Examining Division to take any decision in this respect.

2.8.2 Therefore, the Examining Divisions have no authority according to the EPC to take a decision relating to where oral proceedings are to be held. The consequence is that that issue is not part of the substance of the decision taken by the Examining Division.

2.9 Under the provisions of Art. 21 EPC, the Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions and the Opposition Divisions, and the Legal Division.

2.9.1 The powers of the Boards of Appeal are thus confined to said defined area which does not include management matters.

2.9.2 Therefore the present Board has no power to challenge the contested "refusal of the request to hold oral proceedings in Munich instead of The Hague". This refusal was merely the expression of the way the EPO is organised whereby in the case that the Examining Division is located in The Hague, oral proceedings are to be held in The Hague and when the Examining Division is located in Munich, oral proceedings are to be held in Munich.

2.9.3 As a matter of general consideration, it may well be that users of the European patent system are dissatisfied with this aspect of the organisation of work within the EPO. However, means other than appeal proceedings have to be found to challenge that issue.

2.10 The respect of the separation of the powers within the European Patent Organisation is a matter of the utmost gravity for it is the first guarantee of a smooth running of this institution.

(...)

3. Request for referral to the Enlarged Board of Appeal

The request for referral to the Enlarged Board of Appeal in accordance with Art.112(1)(a) is to be rejected for the reasons given above.

The question "Can a request by a party to conduct oral proceedings at the European Patent Office in Munich instead of at the branch office in The Hague be denied?" is, as already stated, related to an organisational matter beyond the scope of the power to decide of the Examining Divisions and hence of the Boards of Appeal.

As a consequence, the present Board is not empowered to decide on this issue, and correspondingly is not empowered to refer a question in respect thereof to the Enlarged Board of Appeal.

(...)

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.

Catchword

The question of the venue of oral proceedings is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.

This decision has European Case Law Identifier ECLI:EP:BA:2014:T114212.20140408. The whole decision can be found here. The file wrapper can be found here.

Photo by John Morgan obtained from Flickr.