T 1338/12 - Deposit of micro organisms (and transfer priority)

Key points

• In this examination appeal (taken by the Board in extended composition) and with EPC1973 as applicable law (as the Board concluded), claim 1 refers to a deposited microorganism. The applicant is not the same person as the depositor microorganism. Rule 28(1)(d) EPC1973 requires that in such a case an authorization from the depositor must be filed, as well irrevocable consent from the depositor to the deposited material being made available to the public (the same is now in Rule 33). No such consent was filed within the period of Rule 28(2).
• The applicant had requested under Rule 139 EPC2000 (Rule 88 EPC1973) to correct the applicant to the effect of adding the depositor. This correction was accepted by the Examining Division. However, the Board assesses the requested correction substantively.
• The Board finds the submitted evidence to be insufficient to show that the application should have been filed by both the depositor and the applicant. The request was also filed only 9 years after the filing date when the "applicant identity" issue came up.
• "The board considers that the request for correction pursuant to Rule 139 EPC 2000, first sentence, was not a request for correction of an error to reflect the true intention of the sole original applicant at the relevant time, but rather a request for correction at the plaintiff's convenience resulting from a modification of his opinion or a development of his intentions subsequent to the relevant date. Therefore, the board considers that the request for correction under Rule 139 EPC 2000, first sentence, should have been refused by the Examining Division."
• Note the clear analogy with the transfer of priority. 
• Note also that the Board appears to apply (implicitly) the rule that there can be no reformatio in peius in appeals against refusals of applications. Hence, the Board's adverse finding contrary to the decision of the Examining Division to allow the correction presumably does not lead to reformatio in peius.
• The Board leaves open the question of whether the correction if it had been allowable in substance, would have retroactive effect. The Board notes that the microorganism was deposited by two depositors jointly, whereas only one of these was requested to be added. This is still not sufficient under Rule 28 EPC 1973. 
• The Board also rejects the applicant's argument based on the protection of good faith (which argument was based on the Examining Division raising the invalidity of the deposit only years after the filing date).

EPO T 1338/12 - link

Machine translation from the French original

Statement of Facts and Evidence

I. An appeal was lodged by the applicants (SEDERMA and the National Center for Scientific Research, CNRS) against the decision of the Examining Division dated 16 January 2012 to refuse the application European patent no. 02 702 466.0, published as International Patent Application WO 02/066668. The Examining Division considered that the request did not comply with the requirements of Article 83 EPC in conjunction with Rules 31 and 33 EPC, and that the principle of good faith or the protection of legitimate expectations was not applicable in this case.

II. With their statement setting out the grounds of appeal, the applicants sought annulment of the decision of the Examining Division and submitted five annexes in support of their arguments. In the alternative, if the decision of the Examining Division was not annulled, the applicants also sought reimbursement of the renewal fees from 2003 to 2012 and, in any event, the holding of the following oral proceedings Article 116 EPC.

III. By a communication dated 1 August 2018, annexed to the notice of oral proceedings and issued pursuant to the provisions of Rule 15 (1) of the Rules of Procedure of the Boards of Appeal (RPCR), the Chamber explained a provisional and non-binding opinion on some of the points raised.

IV. By a letter of 7 December 2018, the applicants replied to that notification and, without putting forward any new arguments or commenting on that notification from the Chamber, stated that they would not take part in the oral proceedings.

V. Following the oral proceedings held on 14 December 2018 in the absence of the applicants, the Chamber rendered its decision.

VI. Claim 1 on the basis of the sole basis of the decision of the Examining Division is as follows:

1. Cosmetic or dermopharmaceutical composition containing a mixture of proteins obtained by fermentation of microorganisms, then extraction of the proteins produced from the fermented medium, characterized in that the microorganisms are derived from marine waters located near hydrothermal sources of great depth and are of the family Thermus thermophilus and strain GY 1211 (registered under the serial number I-2715 from the National Collection of Microorganisms Culture (CNCM) of the Pasteur Institute of Paris - France), proteins obtained being thermostable up to 100 ° C.

VII. The following documents are cited in this decision:

- "Control of Conformity of the strain GY1211 with the order number CNCM I-2715 deposited with the National Collection of Cultures of Microorganisms (CNCM) on September 5, 2001 under the Treaty of Budapest on behalf of CNRS and University of Brittany- Occidental ", CNCM, Institut Pasteur, pages 1 and 2, 23 November 2001 (document submitted by the applicants / applicants with the letter of 20 March 2008);

- "Power" undersigned by the National Center for Scientific Research (CNRS) by giving power to the Society SEDERMA (Society of Dermatological Studies), page 1, January 30, 2001 (document submitted by the applicants with the mail of the 20 May 2010);

- "Regulation of Joint Ownership No. L00120" between the CNRS and the University of Western Brittany with the SEDERMA Company, pages 1 to 4 and 9, signed on April 12, 2001 (CNRS), March 16, 2001 (SEDERMA) and March 30 2001 (University) (submitted by the applicants / applicants with the mail of May 20, 2010);

- Annex (1): PCT application of this application, filed on February 7, 2002 by SEDERMA;

- Annex (2): Application to enter the European phase, filed on 8 September 2003;

- Appendix (3): VT Marteinsson et al., FEMS Microbiol. Ecology, 18 (1995), 163-174;

- Annex (4): Declaration of Availability and Sustainability of strain GY1211, signed on October 2, 2006;

- Appendix (5): Instructions from the National Collection of Cultures of Microorganisms (CNCM).

VIII. The applicants' arguments, to the extent that they are relevant to this decision, are addressed in the following grounds.

IX. The applicants requested in writing the annulment of the rejection decision and, in the event that this request was not granted, the reimbursement of the annual fees paid from 2003 to 2012.

Reasons for the decision

Article 113 (1) EPC

1. By their decision not to attend the oral proceedings and not to submit substantive arguments in response to the points raised in the Chamber's communication, the applicants chose not to use the opportunity to comment on the provisional opinion of the board, whether in writing or during the oral proceedings, although this opinion was to their disadvantage. According to Article 15 (1) RPCR, the Chamber is not obliged to delay a stage of the proceedings, including its decision, simply because of the absence from the oral proceedings of a duly convened party which can then be treated as relying on its written cause.

2. In light of the foregoing, this decision is based on the same grounds, arguments and evidence on which the Chamber's provisional opinion was based.

The relevant provisions of the EPC and the subject of the request

3. The examining division decided to refuse the patent application for lack of conformity with Article 83 EPC and Rule 13a PCT in conjunction with Rule 31 EPC (see page 7, point 10 of the contested decision).

4. The patent application was filed on February 7, 2002 by SEDERMA (the original originating applicant) with a claimed priority date of February 21, 2001.

5. The revised texts of the Revised European Patent Convention (EPC 2000) and its Implementing Regulations entered into force on 13 December 2007. According to Article 7 (1) of the Revision Act of the EPC , the revised text of the Convention "... does not apply ... to European patent applications which are pending on that date, unless the Administrative Council of the European Patent Organization provides otherwise "(OJ EPO 2007, Special Edition No. 1, 196). In accordance with Article 7 of the European Patent Convention Revision Act, the Administrative Council of the European Patent Office has decided on transitional provisions applying to the amended provisions and to the new provisions of the European Patent Convention. the European patent. Article 83 EPC 1973 is not mentioned in these transitional provisions (OJ EPO 2007, Special edition No 1, 197) and the relevant provisions of the implementing regulation for this article for a deposit of biological material are therefore those cited. in Rule 28 EPC 1973 (OJ EPO 2007, Special Edition No. 1, 89, Article 2).

6. Unlike the Examining Division (see page 7, point 10 of the contested decision), the board therefore considers that the present patent application is governed by the legal and regulatory provisions of the "EPC 1973". Accordingly, the applicable rule concerning the deposit of biological material in relation to this patent application is Rule 28 EPC 1973, as amended by decision of the EPO's Administrative Council of 14 June 1996, which entered into force 1 October 1996 (OJ EPO 1996, 390) (see also decision T 2542/12 of 23 February 2016, paragraph 18 of the Reasons for the Decision).

7. Rule 28 EPC 1973 concerns the deposit of biological material. According to this rule: "where an invention involves the use of a biological material or relates to a biological material, to which the public does not have access and which can not be described in the European patent application so as to enable a person skilled in the art to carry out the invention, the latter shall be considered to be exposed in accordance with the provisions of Article 83 only if ... "he fulfills the conditions set out in paragraphs (1) to (9 ).

8. According to page 3, lines 3 and 4 of the application, the strain Thermus thermophilus, variant GY1211, "is registered under the serial number I-2715 with the National Collection of Culture of Microorganisms (CNCM) of the Pasteur Institute of Paris ". With the letter dated March 20, 2008, the applicant provided a copy of the T. thermophilus strain GY1211 strain deposit certificate to the Institut Pasteur in Paris.According to this certificate, the strain "was deposited at the CNCM on 5 September 2001 under the terms of the Budapest Treaty" (bold type added by the Chamber), that is to say before the date of filing of the European patent application (February 7, 2002). The conditions set out in (1) (a) - (1) (c) of Rule 28 EPC 1973 are therefore fulfilled.

9. According to the copy of the certificate of deposit of the T. thermophilus strain, variant GY1211, this strain "was deposited [e] ... in the name of CNRS and University of Western Brittany", and therefore different from the applicant originating from the European patent application, namely SEDERMA. According to paragraph (1) (d) of Rule 28 EPC 1973 "where the biological material has been deposited by a person other than the applicant, the name and address of the applicant shall be mentioned in the application and shall be provided to the applicant. European Patent Office a document proving that the applicant has authorized the applicant to refer in the application to the biological material deposited and has unreservedly and irrevocably consented to make the material deposited available to the public, in accordance with this Rule "(bold characters added by the Board). In addition, paragraph (2) (a) of Rule 28 EPC 1973 expressly provides that "the particulars referred to in paragraph 1, ... letter d) may be communicated ... within sixteen months of date of filing or, if a priority is claimed, from the priority date, the deadline being deemed to be observed if the indications are communicated until the end of the technical preparations for the publication of the European patent application ".

10. Paragraphs (1) (d) and (2) (a) of Rule 28 EPC 1973 correspond to paragraphs (1) (d) and (2) (a) of Rule 31 EPC 2000, respectively. As mentioned in the decision of the examining division, the conditions laid down in those paragraphs have not been met in the present case (see paragraphs 12 and 13 of the contested decision).

11. The board considers that the purpose of paragraph (1) (d) in conjunction with paragraph (2) (a) of Rule 28 EPC 1973 is to ensure that the deposited biological material is available to the without any reservation or restriction and irrevocably at the time of publication of the European patent application, in this case on 29 August 2002 (or 16 months after the priority date, ie 21 February 2001). This requirement corresponds in fact to the requirement of paragraph (3) of Rule 28 EPC 1973, that "from the date of publication of the European patent application, the biological material deposited shall be accessible to any person who in fact the query "(bold characters added by the chamber). Paragraph (3) of Rule 28 EPC 1973 corresponds to paragraph (1) of Rule 33 EPC 2000 (see paragraphs 12 and 13 of the contested decision).

12. In fact, according to well-established case-law of the boards of appeal, whether the biological material is accessible to the person skilled in the art and available to the public without any reservation or restriction, that is to say if the biological material is sufficiently disclosed by other means, the deposit of the biological material is not necessary to fulfill the conditions of Article 83 EPC 1973 (see, inter alia, T 2068/11 of 17 March 2015, points 3 and 3.1 of the reasons for the decision).In the opinion of the board, the question in the present case is whether the condition under Rule 28 (3) EPC 1973 was in fact fulfilled or, in other words, if the T. thermophilus strain, variant GY1211, was accessible to a person skilled in the art or at the disposal of the public, without any reserve or restriction, at the relevant date.

The applicants' arguments

13. The appellants submit, in essence, two arguments against the decision of the Examining Division referred to above, namely:

13.1 The T. thermophilus strain, variant GY1211, was available to the public and available to any person who requested it on the date of publication of the European patent application, since the existence of that strain had already been disclosed. by scientific articles published in 1995 and 1999 and therefore before the filing date of the priority of the European patent application (21 February 2001). The information contained in these articles in addition to the references of the strain given in the text of the publication of the European patent application would have allowed third parties to obtain the strain from several different sources, namely at least the LMM laboratory, then the Souchothèque de Bretagne and the Institut Pasteur.

13.2 By letter dated 20 May 2010, the plaintiff requested the correction of a substantive error under Rule 139 EPC 2000, first sentence, by requesting the replacement of the name of the original originating claimant (SEDERMA) with the names SEDERMA joint applicants and the CNRS (NATIONAL CENTER for SCIENTIFIC RESEARCH) in all the documents of the European patent application as filed. As of 15 June 2010, the applicants  have been informed by the EPO that the request for correction under Rule 139 EPC 2000 has been accepted. The substantive error correction avoided the need to provide a statement of authorization and consent for the deposit of biological material corresponding to T. thermophilus strain, variant GY1211, in accordance with paragraphs (1) (d) and (2) (a) of Rule 28 EPC 1973, since the applicant for the filing is - and was already originally - one of the applicants for the European patent application. Moreover, in this case, at no time was the legal uncertainty of third parties questioned and no republication of the patent application was necessary. For third parties, the effects of the correction are transparent.

14. The Chamber, having considered the applicants' arguments, wishes to emphasize the following points:

The scientific publications of 1995 and 1999

15. The board agrees, as the applicants argue, that the skilled person was informed of the existence and properties of the T. thermophilus strain, variant GY1211, by the scientific publications of the years 1995 and 1999 (FEMS Microbiology Ecology, 18 (1995), 163-174, and Extremophiles, 3 (1999), 247-251). However, none of these publications discloses the deposit institution and the deposit number of this strain, since it was only filed in 2001 (see point 8 above).

15.1 The board does not share the applicants' argument that the authors of a scientific publication must make available to the scientific community, the biological material that is the subject of the publication, for the purpose of verifying the data of the publication. In the late 1990s and early 2000s, the conditions required for the availability and accessibility of biological material for scientific publication depended heavily on the particular policy of each scientific journal and / or publisher ( s) of such a newspaper. There was not - and there is not yet today - a general unanimity, common to all scientific publications and scientific newspaper publishers. In addition, no evidence was produced showing the conditions required by the publishers of the "FEMS Microbiology Ecology" and "Extremophiles" journals at the relevant time.

15.2 It is also important to note that even though publishers of a scientific journal may require authors of a scientific article to make available to the public the biological material that is the subject of publication, they can not ensure that this is always the case. The request for a sample of the biological material should be addressed directly to the authors of the scientific article and therefore the distribution of this biological material is always at the final discretion of these authors. The board also shares the analysis made by the Examining Division as to the availability and accessibility of the T. thermophilus strain, Variant GY1211, to the Marine Microbiology Laboratory (LMM) and the Brittany Research Strain (see paras. 4 to 7 of the contested decision and, in this context, the plaintiff's letter dated 23 September 2011 with the attestation of Mr Daniel Prieur).

16. In the light of the foregoing, the board does not consider that the conditions referred to in paragraph (3) of Rule 28 EPC 1973 are fulfilled merely because the strain T. thermophilus, variant GY1211, had already been disclosed by two scientific publications.

The publication of this European patent application

17. With the publication of the European patent application (August 29, 2002), a person skilled in the art is informed of the deposit number of the strain T. thermophilus, variant GY1211, the institution from which this strain was deposited ( the National Microorganism Culture Collection, CNCM) and the conditions of this deposit, namely under the terms of the Budapest Treaty (see point 8 above). With this information, the skilled person can address not only the applicants of the European patent application, but also directly to the EPO and / or the institution with which the strain is filed. In the latter case, as provided for by the rules of the CNCM, it would have been necessary first to apply to the EPO for the Office to "certify that an application stating the deposit of the microorganism was submitted to that body. Office or that the applicant is entitled to obtain such a sample under patent law before that Office "(see page 9 under the subheading" Third Party Applications "of Annex 5 submitted with the appeal brief). This requirement corresponds to paragraphs (7) and (8) of Rule 28 EPC 1973.

18. However, the EPO could not have provided such a certificate because the SEDERMA company filing the European patent application did not satisfy the conditions of paragraphs (1) (d) and (2) (a) of the Rule 28 EPC 1973 at the relevant date (see points 9 and 10 above, but see also points below). Moreover, the board is also of the provisional view that if the applicant in the T. thermophilus strain, Variant GY1211, had contacted SEDERMA directly, the situation would have been identical to that considered 15 above for authors of scientific publications, since the distribution of the strain would also have remained at the final discretion of SEDERMA.

Correction under Rule 139 EPC 2000 (Rule 88 EPC 1973), first sentence

19. The first sentence of Rule 139 EPC 2000 (Rule 88 EPC 1973, which has not been amended in substance) states that "... errors in any document filed with the European Patent Office may be rectified on request ". According to the case law of the Boards of Appeal, this rule makes it possible to correct the designation of the applicant, but only under certain conditions (see "Case Law of the Boards of Appeal of the European Patent Office", 8th edition 2016, IV.A.5.2 .2, 953).

19.1 These conditions are described in J 7/80 (OJ EPO 1981, 137). The board decided that the error can be corrected under Rule 88 EPC 1973 if both the wrongly named applicant and the actual applicant are companies belonging to the same group and that sufficient evidence is provided (see point I of the Summary).Decision J 7/80 refers in particular to decision J 8/80 (OJ EPO 1980, 293), in which the board decided that, in the case where the error is not obvious and that it does not is not immediately discernible that nothing else could be envisaged than what is proposed in the motion for correction, it must be laid the highest requirements with respect to the burden of proof. If the evidence submitted is incomplete, unclear or ambiguous, the request for correction must be rejected (see point 2 of the Summary and points 4 to 6 of the Reasons for the Decision). This case-law was subsequently confirmed in decisions J 18/93 (OJ EPO 1997, 326), J 17/96 of 3 December 1996, and J 31/96 of 25 November 1997, and summarized and commented by the Grand Chamber in G 1/12 (OJ EPO 2014, A114, see paragraphs 32 to 40 of the Reasons for the Decision).

19.2 In decision J 31/96 (supra), the board wishes to emphasize the importance of the "true intention" at the relevant date (see last paragraph of point 2 of the Reasons for the decision; point 4 of the reasons for decision J 8/80, supra). This importance is also emphasized by the J 17/97 and J 18/97 decisions of 14 February 2002, in which the board notes that Rule 88 EPC 1973 can not be used by someone for the purpose of obtaining a modification. his opinion or a development of his intentions (see point 2 of the Reasons for the Decision and Decision J 6/91, OJ EPO 1994, 349, point 3 of the Reasons for the Decision).

Are the conditions for a correction under Rule 139 EPC 2000 (Rule 88 EPC 1973), first sentence, required by the case law of the Boards of Appeal given in this case?

20. In this case, the original originating claimant, in support of the correction request under Rule 139 EPC 2000, first sentence, submitted by letter dated 20 May 2010, provided a "Power" undersigned by the CNRS dated January 30, 2001, by which power is given to SEDERMA Company to "make all the necessary steps to deposit in France a patent application for twenty years for the invention relating to the cultivation of strain Gy 1211 and its fermentation medium ". By letter of 15 June 2010, the Examining Division, without giving reasons for its decision, notified the original original applicant that the request for correction pursuant to Rule 139 EPC 2000, first sentence, had been accepted.

21. The Chamber, having considered the evidence provided by the original original applicant, points out that:

21.1 The "Power" of January 30, 2001, signed by the CNRS, concerns the "filing of a request in France for co-ownership between the CNRS and the SEDERMA Company" and, with this "Power", the CNRS accepts that SEDERMA will make " all the necessary steps to deposit in France a patent application ". Yet the "Condominium Regulation" attached to the "Power" is not only signed by the company SEDERMA (March 16, 2001) and the CNRS (April 12, 2001), but also by the University of Western Brittany (UBO) (30 March 2001), the CNRS and the UBO being collectively referred to as "Establishments" (see page 1, page 2, last line, and page 3, articles 1 and 2). In addition, the T. thermophilus strain, variant GY1211, was jointly filed by CNRS and UBO with the CNCM on September 5, 2010.

Nevertheless, the request for correction in accordance with Rule 139 EPC 2000, first sentence, was made to add only the CNRS as the applicant for the patent application, but not to add the UBO together.

21.2 According to the "Joint Ownership Regulations", the party responsible for patents, SEDERMA, may "act on behalf of the co-owners for all acts of management concerning the filing, extension, grant and maintenance of patents "(see the second and last lines of page 3 of the" Regulations ").

The board considers that this formulation is ambiguous, since it does not clearly define whether, for all these acts of management, the company SEDERMA can use exclusively its own name - whereas it acts for all the co-owners, or if it is necessarily obliged to always indicate the names of all co-owners named in the "Regulations".

21.3 The fact that the "Regulation" refers to the "French patent filed on 21 February 2001 under number 0102442 ... on behalf of the CNRS and SEDERMA" (see the fourth paragraph starting from the bottom of page 2 of the "Regulations"). "), when in fact the French patent was filed on behalf of the company SEDERMA, seems rather confirm the first interpretation mentioned in point 21.2 above, and all the more so that the" Power "was signed on January 30 2001, and therefore before the filing of the French patent application. It is also important to note that the filing of the international patent application under the Patent Cooperation Treaty (PCT), as well as the application for entry into the European regional phase before the EPO, dated 7 February 2002 and September 4, 2003, respectively, have always been made on behalf of SEDERMA.

21.4 The request for correction pursuant to Rule 139 EPC 2000, first sentence, was made on 20 May 2010, ie more than 9 years after the signature of the "Power of attorney" and the date of filing of the French patent application. In addition, this request for correction was made in response to a notification from the Examining Division dated 21 January 2010, in which the sole original applicant's attention was drawn to the "invalidity of the filing of the GY1211 in view of Rule 31 (1) (d) EPC ", since" the filing of the strain mentions the CNRS and the University of Western Brittany as applicant, while the patent application was filed by SEDERMA ".

22. In summary, the board considers that the "Power" document and the "Regulation" attached by the original original plaintiff are ambiguous as to its true intention at the relevant time. This evidence does not meet the highest requirements of the case law of the Boards of Appeal mentioned above. The board considers that the request for correction pursuant to Rule 139 EPC 2000, first sentence, was not a request for correction of an error to reflect the true intention of the sole original applicant at the relevant time, but rather a request. in correction at the plaintiff's convenience resulting from a modification of his opinion or a development of his intentions subsequent to the relevant date. Therefore, the board considers that the request for correction under Rule 139 EPC 2000, first sentence, should have been refused by the Examining Division.

Can the correction under Rule 139 EPC 2000 (Rule 88 EPC 1973), first sentence, exempt applicants from fulfilling the requirements of Rule 28 (EP) (1) (d) and (2) (a)? 1973?

23. Even if the board, contrary to the above considerations, accepted the request for correction pursuant to Rule 139 EPC 2000, first sentence, it would then be necessary to consider whether that correction takes effect retroactively to the date of filing. patent as argued by the appellants in their appeal brief (see "Case Law", supra, IV.A.5.2.2, penultimate paragraph on page 953), or if that correction has no retroactive effect, as decided by the Examining Division by reference to decisions G 3/89 (OJ EPO 1993, 117, point 4 of the Reasons for the Decision), G 11/91 (OJ EPO 1993, 125, point 4 of Reasons for the Decision), G 2/93 (OJ EPO 1995, 275, point 12 of the Reasons for the Decision) and, in particular, Decision J 3/01 of 17 June 2002, point 7, and especially point 10 of Reasons for the decision (see paragraphs 15 to 17 of the contested decision).

24. Even assuming that it is convinced by the applicants' arguments concerning the retroactive effect of the correction in accordance with Rule 139 EPC 2000, first sentence, the board wishes to point out that the filing of the T. thermophilus GY1211, at the CNCM on September 5, 2001 (approximately 6 months after the filing of the priority French patent application dated February 21, 2001), was made on behalf of the CNRS and the UBO. The applicants of this strain are thus still different from those which appear - once the correction in accordance with Rule 139 EPC 2000, first sentence, is accepted - as applicants for the European patent application, namely the company SEDERMA and the CNRS . The question then arises as to whether, as the applicants claim in their pleadings, the error correction in accordance with Rule 139 EPC 2000, first sentence, "automatically erases the need to provide a statement of authorization and of consent ", without reservation and irrevocably, to put the strain T. thermophilus, variant GY1211, available to the public, that is to say to fulfill the conditions required by the terms (1) d) and (2 ) of Rule 28 EPC 1973.

25. It is important to note that the applicants of the T. thermophilus strain, variant GY1211, with the CNCM (CNRS and UBO) are the absolute owners of this strain, that is to say of the strain in itself, without no restrictions. On the other hand, as it is clear from the "Regulation" attached to the "Power" referred to above, the co-owners of the French patent application between "Etablissements" (the CNRS and the UBO) and the company SEDERMA define well the conditions and limitations of use of this strain, such as the use of the patent for research purposes, direct and indirect commercial exploitation of the patent, as well as holdings in the particular field of the patent (cosmetology) and the territory ( France) and outside this domain and / or territory.

26. The board considers that the presence - once the correction in accordance with Rule 139 EPC 2000, first sentence, accepted - only of one of the co-owners of the strain deposited with the CNCM as applicant for the present European patent application may not "erase the need to provide a statement of consent and consent" from the other legitimate co-owner of that strain. The board therefore considers that the applicants' arguments on this point are not convincing.

Good faith of the applicants

27. The EPO Communiqué (OJ EPO 1986, 269) concerns European patent applications and European patents referring to micro-organisms. In Part II of this release, these microorganisms are classified into two categories, namely, microorganisms that are not accessible to the public and can not be adequately described (Part II.A) and microorganisms that are publicly II.B). Item 7 of Part II.A refers to deposits made in accordance with the Budapest Treaty and the time limits for conversion into a Budapest Treaty deposit for deposits previously made under a different legal status. Decision G 2/93 (OJ EPO 1995, 275) concerns the time allowed for communicating the deposit number of a crop in accordance with Rule 28 (1) (c) EPC 1973. In point 12 of that decision, reference is made to the consent of the applicant to make the culture available to the public unreservedly and irrevocably in accordance with the provisions of Rule 28 EPC 1973 (see also paragraph 6 above for the decision of the Administrative Council of the EPO of 14 June 1996).

28. The board considers that the conditions for the deposit of microorganisms not accessible to the public - for the purposes of Article 83 EPC 1973 - were already well established in the EPC 1973 (Rule 28 EPC 1973), and that the EPO had clearly informed the public of all these conditions, in particular that the deposit should be accessible without any reservation or restriction and irrevocably to the person skilled in the art. In the opinion of the board, the time limits and conditions for making such a filing, in particular those set forth in 28 (1) (d) and (2) (a) of Rule 28 EPC 1973, were also well established in the relevant date of the European patent application.

29. In the present case, the subject-matter of the original European patent application was broadly defined, the first claim at the entry of the European phase concerned a "process for the manufacture of proteins by micro fermentation. -organisms ... in that the micro-organisms are of the Thermus family and come from marine waters ... ". The T. thermophilus strain, variant GY1211, was the subject of the second claim directly dependent on the first. However, neither in the international phase nor when entering the European phase did the original single applicant indicate that "the invention concerns and / or uses biological material deposited in accordance with Rule 28 EPC" (see 8 of the "Entry into the European Phase" form, signed by the applicant on 4 September 2003, where reference is made to paragraph (3) of Rule 28 EPC).

30. It is, however, the sole responsibility of the applicant to complete the patent application forms and to assess whether the invention concerns and / or uses biological material to be filed in accordance with Rule 28 EPC 1973. In the opinion of the board, it is not possible or reasonable to wait for the Receiving Section to consider whether a deposit of biological material is essential for the invention for the purposes of Article 83 EPC 1973. According to the Article 16 EPC 1973, "the Receiving Section is competent to examine European patent applications at the time of filing and as to the formal requirements" (bold type added by the Chamber). The fact that the Examining Division had informed the original originating applicant of the European patent application of the need to provide a certificate of filing of the T. thermophilus strain, variant GY1211, "... while the patent was on the to be issued ... [and not] ... much earlier, namely from the international preliminary examination in the course of 2003 ... ", as argued by the complainants in their appeal brief, can be considered as an error in the assessment of the Examining Division, but not a procedural flaw, let alone a substantial flaw. In the present case, the principle of good faith and the protection of legitimate expectations can not therefore be relied on. This principle can in no way justify the applicants' reporting on the EPO of their responsibility in the present case to meet the requirements for deadlines and conditions for a deposit of biological material under Rule 28 EPC 1973 ( see "Jurisprudence", supra, III.A.3.1, 596, and III.A.3.3, 600).

31. In their pleadings, the appellants require, in the alternative, in the event that the decision of the examining division is not annulled, at least the reimbursement of the renewal fees from 2003 to 2012 ( appeal). However, the applicants have not indicated the articles and / or rules of the EPC on which such reimbursement is based and could possibly be ordered by the board. Therefore, in the present case and having regard to the foregoing, the board considers that such a refund would not be justified.

General conclusion

32. It follows from all the foregoing that none of the applications at issue meet the requirements of the EPC, and the present action must therefore be dismissed.

Order

For these reasons, it is decided as follows

1. The appeal is dismissed.

2. The request for refund of the renewal fees from 2003 to 2012 is rejected.