T 1824/15 - Excessive length of procedure

Key points

• " The board finds that, in the light of the ECtHR decision [Kristiansen and Tyvik AS v. Norway], the eleven years that elapsed in the present case between the publication of the Partial Search Report and the first raising of the objection based on D3, even though eleven years is longer than six years, is not necessarily an unreasonably long delay under the circumstances violating Article 6(1) ECHR." 

EPO T 1824/15 - link

Reasons for the Decision

1. The admissibility of the appeal

In view of the facts set out at points I, VI and VII above, the appeal complies with the admissibility requirements under the EPC and is therefore admissible.

2. The alleged substantial procedural violations

2.1 Summary of the allegations

The appellant has argued that two different delays in the first instance proceedings each amounted to a substantial procedural violation, Rule 103(1)(a) EPC, namely the delay of over eleven years in raising an inventive step objection based on D3 and the delay of seven months in issuing the written decision and minutes after the oral proceedings. In view of these issues, the board took this case considerably out of turn, well before it would otherwise have been started. As set out below, the board finds that, in particular because neither delay was contrary to a provision of the EPC, no fundamental deficiency, Article 11 RPBA, or procedural violation, let alone a substantial procedural violation, Rule 103(1) EPC, occurred. This does not however mean that the board is indifferent to the consequences of unjustified procedural delays.

2.2 Provisions in the EPC relating to procedural delay

Before going into the facts of the two allegations, the board notes that, although the EPC sets out time limits applicable to the applicant, for instance the time limit for replying to an Official communication, Article 94(4) EPC, the EPC does not set out time limits applicable to the examining division in the two situations relied upon by the appellant. It could be argued that this is an "absence of procedural provisions", Article 125 EPC. However the appellant has provided no arguments as to how such time limits are derivable from principles of procedural law generally recognised in the contracting states. The board finds no basis either. The legal basis relied upon by the appellant, namely Rule 103(1)(a) EPC, concerns the reimbursement of the appeal fee, but can provide no relief for the appellant in the two situations relied upon by the appellant, since the appeal is not being allowed, a further condition for reimbursement under Rule 103(1)(a) EPC. Also Article 11 RPBA provides no suitable remedy against unreasonable delays in first instance proceedings, since remittal can only increase the duration of the first instance proceedings and thus cannot provide any relief to the applicant or third parties.

2.3 The delay in raising an objection based on D3

2.3.1 The appellant has criticized the fact that, although D3 was categorized as technological background ("A") in the partial European Search Report dated 24 February 2003, an inventive step objection starting from D3 was nevertheless raised for the first time in the communication dated 19 September 2014, after the summons to oral proceedings had been issued and three weeks before the oral proceedings. Moreover in the oral proceedings the examining division conceded errors in the arguments based on D3 and revised them.

2.3.2 The question arises whether the examining division was entitled to raise the new objection so late in the first instance proceedings. The board finds that it was. Although, in the interests of a fair procedure, an examining division should raise objections as early as possible, firstly to give the applicant time to react properly and secondly for reasons of procedural economy, these considerations do not prevent the raising of new objections by the examining division at any time, nor does it prevent any member of the examining division from changing his/her mind. Indeed how could it be any other way? It is a precondition of a fair examination procedure that the members of the examining division be free to change their minds at any point in the procedure, including during the oral proceedings, as long as the requirements of Article 113(1) EPC 1973 are fulfilled by giving the applicant an opportunity to present his comments before a decision is taken. In the present case D3 became more important as the applicant succeeded in demonstrating the lack of relevance of D1. Hence the examination division had good reason, in view of the changed factual situation, to raise a new objection based on D3 even late in the examination procedure, Article 114(1) EPC. Under these circumstances, the board questions whether one can even speak of a "delay" in this context. Also the fact that, during the oral proceedings, the examining division changed its argumentation in the light of the applicant's arguments speaks for, rather than against, the examining division: the division heard and reacted to the applicant's arguments.

2.3.3 As to whether the applicant was able to comment properly on the new objection, Article 113(1) EPC 1973, the board notes that the inventive step objection starting from D3 was raised for the first time in the communication dated 19 September 2014, deemed received by the applicant ten days later on 29 September 2014, Rule 126(2) EPC. Hence the applicant was made aware of the new objection at least nine days before the oral proceedings on 8 October 2014. While it is true that, as the appellant has pointed out, the objection was raised around 3000 days after D3 was first mentioned in the partial European Search Report, this is not contrary to any provision of the EPC. Moreover the appellant has not shown why he, as applicant, could not properly present his comments within nine days. The board cannot discern any such reasons either. Hence the board finds that the applicant's right to be heard, Article 113(1) EPC 1973, was respected.

2.3.4 In the submission received on 24 June 2016 the appellant referred to the decision (cited above) of the European Court of Human Rights (ECtHR), based on Article 6(1) European Convention on Human Rights (ECHR) (formerly the "Convention for the Protection of Human Rights and Fundamental Freedoms"), and decision T 0823/11, which also cites said ECtHR decision.  [ the decision is "Kristiansen and Tyvik AS v. Norway" dated 2 May 2013, European Court of Human Rights (ECtHR), application no. 25498/08.]
The appellant argued that in T 0823/11 a delay of twelve years between filing and a decision of the examining division was found to be too long and that the logic of that decision applied to the present case in which there had been an even greater delay of twelve and a half years between filing and the first raising of the objection based on D3. Hence the delays in the present case were more egregious than in T 0823/11. The ECtHR decision had found a national patent office to be responsible for nearly six years of delays. In the present case the objection based on D3 had been first raised eleven years after the publication of the search report, a delay almost twice that in the ECtHR case. Hence, according to the appellant, in the light of either of these decisions, a substantial procedural violation had occurred.

2.3.5 The European Convention on Human Rights (ECHR)

Article 6(1) ECHR, first sentence, states that "In the determination of his civil rights and obligations or of any criminal charge against him, everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal established by law." Although the European Patent Organisation is not a party to the ECHR, all the EPC contracting states are. Article 6(1) ECHR has also been recognised by the boards of appeal of the EPO as relevant to decisions under the EPC, in particular in the context of Article 125 EPC, as an indicator of principles of procedural law generally recognised in the contracting states; see interlocutory decision in case T 0261/88 (OJ EPO 1992, 627, reasons, point 3.2, last two paragraphs), interlocutory decision in case G 0001/05 (OJ 2007, 362, reasons, point 22) and interlocutory decision in case G 2/08 (not published, reasons, point 3.3). When, accordingly, Article 6(1) ECHR is applied in EPO proceedings, it must be interpreted by the EPO and its boards of appeal. In particular, it has to be determined and decided by the EPO and its boards of appeal whether the "reasonable time" requirement according to Article 6(1) ECHR is satisfied or not.

2.3.6 The case law of the European Court of Human Rights (ECtHR)

One source for the interpretation of Article 6(1) ECHR in EPO proceedings may be the case law of the ECtHR. In order to understand the context of the ECtHR decision, the board first briefly reviews the case law of the ECtHR regarding Article 6 ECHR. This is reviewed on the court's website in the following document:

"Guide on Article 6 of the European Convention on Human Rights", URL: http://www.echr.coe.int/Documents/Guide_Art_6_ENG.pdf, copyright 2013, text finalised on 30 April 2013.

The Guide summarizes the approach taken by the ECtHR (hereinafter referred to as "the court") regarding the right to a court (pages 14 to 19) and the length of proceedings; see pages 50 to 54. It may be summarized as follows. Article 6(1) ECHR embodies the "right to a court", of which the right of access, the right to institute proceedings before courts in civil matters, constitutes one aspect. The right to a court and the right of access are not absolute and may be subject to limitations, but these must not restrict or reduce the access left to the individual in such a way or to such an extent that the very essence of the right is impaired; see point 43. In considering procedural length, the starting point is normally taken to be the moment the action was instituted before the competent court, although exceptionally in cases where, for example, certain preliminary steps were necessary before an administrative authority as a preamble to court proceedings, the starting point can be that of the mandatory preliminary administrative procedure; see points 271 and 272. The end of proceedings is taken to be the end of the entire proceedings, including appeal proceedings, which disposes of the dispute; see point 274. The reasonableness of the length of proceedings must be assessed in each case according to the particular circumstances, which may call for a global assessment; see point 278. Delays which are, taken alone, acceptable may nevertheless result in an unreasonable total delay; see point 279. A delay during a particular phase of the proceedings may be permissible if the total duration of proceedings is not excessive. Long periods during which the proceedings stagnate without any explanations being forthcoming are not acceptable. According to the court's case law, the reasonableness of the length of proceedings must be assessed in the light of the following criteria: the factual, procedural and legal complexity of the case, the conduct of the applicant and of the relevant authorities and what was at stake for the applicant in the dispute. Cases involving issues such as civil status, child custody and employment disputes are regarded as particularly urgent; see points 282, 283, 300 and 301. Regarding the applicant's conduct, Article 6(1) ECHR does not require applicants to cooperate with the judicial authorities, nor can they be blamed for making full use of the remedies available to them under domestic law; see point 285. The applicant is only required to show diligence in carrying out the procedural steps relating to him, to refrain from using delaying tactics and to avail himself of the scope afforded by domestic law for shortening the proceedings; see point 286. Regarding the conduct of the relevant authorities, only delays attributable to the state may justify a failure to comply with the reasonable time requirement; see point 290. Even in legal systems applying the principle that the procedural initiative lies with the parties, the latter's attitude does not absolve the courts from the obligation to ensure the expeditious trial required by Article 6(1) ECHR; see point 291. It is for the contracting states to organise their legal systems in such a way that their courts can guarantee the right of everyone to obtain a final decision on disputes relating to civil rights and obligations within a reasonable time; see point 293. The fact that backlog situations have become commonplace does not justify the excessive length of proceedings; see point 295.

2.3.7 For the purposes of a decision on the present appeal, the facts of the case leading to the ECtHR decision, set out in section I of that decision, may be summarized as follows. The case concerned an application by the applicants to the ECtHR regarding the examination of a patent application by the Norwegian Industrial Property Office (NIPO) involving two complaints to the Parliamentary Ombudsman for Civil Matter and two appeals to NIPO's Board of Appeals. In total these proceedings lasted just under eighteen years, whereupon the applicants chose not to appeal to the Norwegian courts but instead filed an application with the ECtHR. The court did not allow a request by the respondent (Norway) to declare the application inadmissible on the basis that the applicants had failed to exhaust domestic remedies, stating that, in disputes regarding the lawfulness of the procedure under national law or its compatibility with the ECHR, complaints could be raised as soon as the applicants had an arguable claim that their Convention rights were violated; see point 42. The applicants argued that NIPO had neither performed a novelty search nor an examination during the first fifteen years of the proceedings. The respondent argued that "the general complexity of the search and patentability examination had accounted for a significant part of the total period in question" and that the applicants were themselves responsible for the greater part of the total period, since they had made the case more complex by repeatedly contesting NIPO's requests for test results on the invention and by refusing to amend the claims as proposed by NIPO. The respondent however accepted responsibility for nearly six years of procedural delay due to matters of examiner workflow and preparation by the Board of Appeals; see point 50.

2.3.8 In its decision the court stated that the issuing of the NIPO Board of Appeals' final decision less than two years before the term of the patent, had it been granted, would have lapsed under section 40 of the Norwegian Patents Act meant that, in practical terms, the length of the administrative proceedings before NIPO in effect rendered meaningless any exercise by the applicants of their right of access to a court; see points 53 and 57. The exceptional duration of the procedure, compared to the average of two to three years (see point 54), was found to be largely attributable to a dispute between NIPO and the first applicant regarding the need to provide test results on the invention, the first applicant having repeatedly refused to carry out such testing. The length of the proceedings was however not solely the first applicant's responsibility, as the respondent had admitted that the patent authorities were responsible for delays totalling six years; see point 56. The court found that there had been a violation of the right of access to a court, Article 6(1) ECHR (see tenor, point 2), but stated (see tenor, point 3) that "no separate issue arises" as to whether there had been a violation of the entitlement to a hearing within a reasonable time", Article 6(1) ECHR, and that "it is not necessary to examine this matter under this provision". The present board understands points 2 and 3 to mean that, based on the facts of the case, the court could already conclude that a violation of Article 6(1) ECHR had occurred due to a denial of access to a court. Hence it was unnecessary to also consider whether a further violation of Article 6(1) ECHR arose from unreasonable procedural delays.

2.3.9 The present case in the light of the ECtHR decision

The board finds that caution is required in interpreting the ECtHR decision for two reasons. Firstly, in view of the court's own case law, in particular points 271 and 272, discussed above, the ECtHR decision concerns exceptional circumstances, since the procedural duration under consideration only concerned administrative proceedings, the usual court proceedings being entirely missing. Secondly, the board is unclear as to whether all of the administrative steps discussed in the ECtHR decision qualify as matters of "mandatory preliminary administrative procedure", as point 272 of the Guide puts it.

In the reasons for its decision the ECHR does not find that the delay of six years attributable to the patent authorities was the sole cause of a violation of Article 6(1) ECHR. Instead the court found that this was a minor contributor to the total duration, the major contributor being the dispute regarding the provision of test results on the invention. Moreover, according to the ECtHR's case law, what is a "reasonable time" must anyway be assessed according to the particular circumstances of the case; see point 278. Hence, for both of these reasons, the ECtHR decision cannot be understood as a blanket finding that six years of delay attributable to patent authorities constitute a violation of Article 6(1) ECHR. The board is also not persuaded that the period of eleven years referred to by the appellant can be considered as a "delay" comparable to the six years in the ECtHR case that the applicant waited for responses from NIPO. In the present case three substantive communications were issued by the examining division and three corresponding responses were received from the applicant in the period of eleven years in question. Consequently the board finds that, in the light of the ECtHR decision, the eleven years that elapsed in the present case between the publication of the Partial Search Report and the first raising of the objection based on D3, even though eleven years is longer than six years, is not necessarily an unreasonably long delay under the circumstances violating Article 6(1) ECHR.

2.3.10 Decision T 0823/11

This decision concerns the refusal of a Euro-PCT application, the supplementary European Search Report being completed on 18 February 1999. The first communication by the examining division was issued over five years later on 7 June 2004. There followed two further official communications and two corresponding substantive responses, the last being dated 10 August 2007. Over two years later the examining division sent a summons dated 8 March 2010 to oral proceedings at which the application was refused, the decision being deemed notified on 10 October 2010. On appeal the appellant requested a decision on the state of the file. The board decided to set aside the decision, to remit the case and to reimburse the appeal fee.

2.3.11 According to the reasons for the decision (see point 5),

"The Board hence concludes that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations."

The present board understands this statement to mean that inter alia an excessive procedural duration was found to be a substantial procedural violation. As set out below, the present board deviates from this interpretation of the EPC, Article 20(1) RPBA.

2.3.12 According to point 2 of the reasons for decision T 0823/11, it followed from the summary of the first-instance proceedings (section II of the decision) that their length was affected by "unacceptable delays", in particular the delay of more than five years between completion of the supplementary European Search Report and the examining division's first communication and the delay of more than two years between the applicant's reply of 10 August 2007 and the summons to oral proceedings. The delays could not be "justified by the particular circumstances of the case", and the duration of the first-instance proceedings of more than twelve years after entry into the European phase had to be regarded as "excessive".

The present board notes that the reasons for decision T 0823/11 do not explain why the delays in the examination procedure could not be justified by the particular circumstances of the case, were "unacceptable", "excessive" or amounted to a substantial procedural violation, Rule 103(1)(a) EPC.

2.3.13 The board went on to state (see reasons point 2, 2nd paragraph) that

"According to decision T 315/03, even a shorter delay of ten years in a much more complex opposition case amounted to a procedural violation (points 15.5 and 15.6 of decision T 315/03 [...]). The Board in that case found that such a delay was not "within a reasonable time" and therefore infringed Article 6(1) of the European Convention on Human Rights (ECHR)." See also point 34 of the reasons in T 0823/11, 3rd paragraph, last sentence.

The present board puts a different interpretation on the cited passage in T 0315/03 ("Transgenic animals/HARVARD", OJ EPO 2006, 15) to that given in decision T 0823/11. Point 15.5 of the reasons in T 0315/03 states that

"That there was unjustified delay, as alleged by the parties, is clear - on any view, ten years to dispose of first instance proceedings is far too long. ... Ten years to dispose of proceedings at one instance is much longer than some periods which have been found not to be "within a reasonable time" contrary to Article 6(1) [ECHR] ..."

The present board does not understand the statement in T 315/03 as a finding that a duration of ten years for first instance proceedings is a violation of Article 6(1) ECHR. Hence the board does not agree with the finding in T 0823/11 that "According to decision T 315/03, even a shorter delay of ten years in a much more complex opposition case amounted to a procedural violation ..."

2.3.14 Decision T 0823/11 also states (see reasons, point 2, 3rd paragraph) that

"The Board's considerations in the present case are also in line with a judgment in the case of [the ECtHR decision] ..."

The present board notes that decision T 0823/11 does not further explain how its reasoning was "in line with" that of the cited ECtHR decision, in particular why circumstances leading to a finding of a violation under Article 6(1) ECHR would necessarily also lead to a finding of a substantial procedural violation under Rule 103(1)(a) EPC.

2.3.15 The present case in the light of T 0823/11

In the submission received on 24 June 2016 the appellant argued that in T 0823/11 a delay of twelve years "between filing and a decision" was found to be too long. This is factually incorrect. The period of twelve years referred to in case T 0823/11 (see reasons, point 2, paragraph 2) as "excessive" was that between the entry into the European phase and the date of the appealed decision. The period "between filing and a decision" in case T 0823/11 was actually fourteen years. Hence, contrary to the appellant's argument, the period in the present case of twelve years between the filing date and the appealed decision is less than, not greater than, that in T 0823/11.

The appellant has also argued that the logic of the decision in T 0823/11 also applied to the present case. As set out above, the board takes the view that T 0823/11 does not explain how the conclusions of "excessive" delay and "substantial procedural violation" were reached. Hence the board is unable to apply the logic of that decision to the present case.

2.3.16 The board concludes that the raising of the objection based on D3 led to neither a fundamental deficiency, Article 11 RPBA, nor a procedural violation, let alone a substantial procedural violation, Rule 103(1)(a) EPC, in the first instance proceedings. The appellant has also not established that a violation of Article 6(1) ECHR occurred.

2.4 The time taken by the examining division to issue the written decision and minutes

2.4.1 The appellant has argued that the decision to appeal could only be made once the reasons for the examining division's decision and the minutes had been issued in writing. This was particularly important in the present case where the final arguments based on D3 were only explained orally in the oral proceedings. The written decision and minutes were issued seven months after the oral proceedings. This delay was greater than the appellant's estimate of a "reasonable period" of four weeks and amounted to a substantial procedural violation, since "no original work" was involved in putting the decision reached in the examiners' minds at the oral proceedings onto paper. The appellant argued that an "applicant loses out in three aspects when seven months lapse between an Oral Proceedings and receiving the refusal". Firstly, as a result of the delay, the applicant may be, and in the present case had been, forced to pay a further renewal fee while waiting for the written decision and minutes, which he required in order to fully understand the examining division's reasoning so that he could decide whether or not to appeal. On this point the appellant also requested that the board refer a question relating to the reimbursement of renewal fees to the Enlarged Board of Appeal, which is dealt with at the end of this decision. The appellant did not however request that a renewal fee be reimbursed. Secondly, the representative is forced to make "considerably more extensive notes during an Oral Proceedings, if the representative has no idea when the minutes and refusal decision are likely to arrive ..." This prolonged proceedings, which was neither in the applicant's nor the division's interest. Thirdly, there was a diminishing chance, over time, that "all of the representative, the first examiner, the instructing attorney for an applicant, and the inventor, [...] remain available", increasing the chance that other staff would need to start considering a case "from scratch".

2.4.2 The board points out that the EPC does not specify how soon after oral proceedings the written decision and minutes are to be issued. Moreover a delay in issuing the decision does not reduce the time available to the applicant to decide whether to appeal, since the time limit for filing a notice of appeal, Article 108(1) EPC, starts to run when the written decision is notified, Rule 111(1) EPC, rather than on the date of the announcement of the decision in oral proceedings. It is, of course, desirable, for reasons of legal certainty, also for third parties, that an examining division issue the written decision and minutes within a reasonable time after oral proceedings, and excessively long delays in any procedural step may in principle indeed amount to a denial of justice. At the very least, long delays can indeed give rise to the availability problems mentioned by the appellant in his third point. Nevertheless an examining division must properly draft, discuss and agree on the text of the decision to fulfil its obligations under the EPC, in particular Rule 111(2) EPC, that the decision be reasoned. Hence the board does not accept the appellant's argument that "no original work" is involved in issuing the written decision. In the present case there is no indication in the file that the period between the hearing and the issuing of the decision and minutes was, under the circumstances, excessively long. Regarding the appellant's second point, the board is not persuaded that the taking of notes during oral proceedings is necessarily affected by procedural delays or that it prolongs the oral proceedings themselves. As mentioned above, the appellant's first point is dealt with at the end of this decision.

2.4.3 In the past, boards of appeal have found that long delays by the first instance between oral proceedings and the issuing of the written decision can constitute a substantial procedural violation; see section IV.E.8.4.6 of the Case Law of the Boards of Appeal of the EPO, 8th Edition 2016. The present board takes the view that the effects of long delays, for instance having to change the composition of an opposition division due to the non-availability of the original members, a consequence of delays highlighted by the appellant himself, rather than the delays themselves, have often been seen as the root cause of a substantial procedural violation. The board is unaware of any decision by a board of appeal in which a delay of seven months (or less) between oral proceedings and the issuing of the written decision and minutes was found to be a substantial procedural violation.

2.4.4 In view of the above considerations, and particularly because the EPC does not specify how soon after oral proceedings the written decision and minutes are to be issued, the board finds that the delay of seven months was not a procedural violation of any sort, let alone a substantial one, Rule 103(1)(a) EPC, and also not a fundamental deficiency, Article 11 RPBA.