Key points
- The Board, in the translated headnote: "The procedure under Rule 71(6) EPC does not apply [if the Board remits an application to the Examining Division with the order to grant a patent with specified claims, description and drawings] in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC"
- Article 164(2) EPC is the provision that states that the Articles prevail over the Rules, in case of conflict. It is applied rarely.
- The Board, in r.3.5: the Explanatory Remarks to Art. 11 RPBA 2020 are "at
least misleading" on one point (original: “Die Passage in den Erläuterungen: "sei es mit oder ohne Anpassung der Beschreibung" ist zumindest irreführend.”).
- In the present case, the Board had remitted the application in decision T1891/12 with an order to grant a patent with a specified text. The applicant filed amended claims under Rule 71(6) EPC, these were not admitted by the Examining Division. This raises the question of the precise status of the order in the first appeal decision. The present Board finds that the remittal was based on the following green part of Art. 111(1), second sentence, not the blue part: “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. ”
- The Board concludes this in r.3.5, first sentence and r.3.4.2, 2nd para, last sentence.
- So, even though Board in T1891/12 remitted the case, this was not according to the part of Art.111 that mentions "remit the case", according to the present Board, but according to the part of Art.111(1)(s.2) which does not mention a remittal.
- As to how the Board arrives at this conclusion, the reader is referred to the Board's full text, provided in translation below. It's too difficult to summarize fully.
- As to the Board applying Art.164(2), the headnote indicates that Rule 71(6) is declared non-applicable under Article 164(2) EPC. It seems that the Boards reasoning on this point consists of "The primacy of Article 111 EPC as interpreted above over Rule 71(6) EPC with regard to amendments follows from the EPC". After citing Art. 164(2) EPC, the Board continues with "It also follows that Rule 100(1) EPC, according to the wording of which Rule 71 (6) EPC on amendments would apply, is to be interpreted restrictively - and excluding this applicability - in accordance with Article 111 EPC". Here, the Board seems to declare Rule 100(1) EPC in part non-applicable under Art.164(2), which seems to be a distinct point.
- As a comment, I find the Board's reasoning difficult to follow. The Board's view that the Examining Division after the remittal by the Board should not apply Rule 71(6), seems unrelated to Rule 100(1) (to me) as Rule 100 EPC is about the applicable rules during the appeal proceedings.
- As a comment, the Examining Division had held the amended claims inadmissible under Rule 137(3) EPC. The Board could affirm on this ground but decides to arrive at essentially the same conclusion on a different (new) legal ground. However, T 0222/21 recently held that "what matters for the exercise of the discretion to admit or not to admit [amended claims under Rule 71(6) EPC], if the text was "extensively revised" (which was not the case in the present case).
- G 7/93, headnote 1: “Following issue of such a communication under [Rule 51(6) EPC 1973, corresponding to the invitation for to pay the grant fee under Rule 71(3)] and until issue of a decision to grant the patent, the Examining Division has a discretion under [Rule 86(3) EPC 1973 = Rule 137(3)] whether or not to allow amendment of the application.”
- The present decision does not refer to G7/93.
- Rule 71a(5): "Until the decision to grant the European patent, the Examining Division may resume the examination proceedings at any time."
- The present decision does refer to Rule 71a(5) but I assume that the Board would consider it non-applicable. In a way this seems to be the basic trade-off: neither the Examining Division nor the applicant can change the substance of patent to be granted in any way.
- A question is whether the Board in the previous appeal proceedings T1891/12 should have given the applicant a period of four months (cf. Rule 71(3)) to finally confirm the approval of the set of claims, before taking a decision making that set of claims res judicata (cf. point XII of the decision text below). Strictly speaking, this question is beyond the scope of the present appeal because any errors in those appeal proceedings can not alter the decision that was taken. The established practice of the Boards to not issue such a communication follows from J8/98, r.2.2, in particular r.2.2.2 (referenced in the present decision as well). An important remark in J8/98 for representatives seems to be this one: “If [the applicant] considers a further check of the documents necessary, eg because the discussions in the oral proceedings resulted in significant amendments, he may request to be given an opportunity to do so. In the absence of any reservation in this direction, he cannot expect a further opportunity to comment on the version submitted by himself or to amend it once more.”
- The phrase "may request" indicates that the Board should in principle grant the request for more time.
- As a final comment, a non-appealed decision of a first instance department is also res judicata; the principle in this sense is not based on the nature of appeal proceedings being an appeal, but on there being no way to contest the decision anymore.
- Translation of the full decision text after the jump; I've spent quite some time on editing and formatting the text.
Headnote (machine translation)
If a Board of Appeal remits a matter for the grant of a patent in a specified text, i.e. with specified claims, description and drawings, to the Examining Division, the decision on the text of the patent is based on Article 111(1), second sentence, variant 1, EPC. This patent version is binding (res iudicata, rechtskräftig) for the examining division in application of the legal principle enshrined in Article 111(2) EPC, in application of which the remittal also takes place. The procedure under Rule 71(6) EPC does not apply in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC.
Link and machine translated text of the decision after the jump.
T 2558/18
Formatting in bold is as in the original decision, however, not all
bold formatting in the original has been repeated in the translation. The
translation is an edited machine translation.
Marking in red is my
own emphasis (PJL).
Facts and requests
[No. IX
are taken from the notice of summons ("Notification pursuant to Article 15
(1) RPBA") of February 25, 2021.]
I.
The applicant's appeal is directed against the decision of the examining
division of June 4, 2018 to refuse European patent application No. 03008932.0.
II.
The examining division had already rejected the application once with a decision
of April 13, 2012. In response to the appeal filed against this with file
number T 1891/12, the adjudicating board in the same composition overturned the
negative decision by decision of July 10, 2017 and referred the matter back to
the examining division with the order to grant a patent with the following
wording:
Claims
No. 1-12 according to the main
request (from 2:40 p.m.), filed in the oral hearing on July 10, 2017,
Description:
Pages 1-11 of the fair copy filed
at the hearing on July 10, 2017,
Drawings:
Sheet 1/7 to 7/7 in the original
version.
III. On
3 November 2017, the examining division issued a Rule 71(3) EPC communication
based on the above patent version.
IV.
By letter dated February 23, 2018, the appellant filed amended, "slightly linguistically
revised" claims 1-12 and requested that the grant be based on them.
In
particular, the last feature in claim 1, after which the measuring head (14) is
rotated around the entire circumference of the tire (12), clarified by the
following formulation:
wherein
the probe (14) is rotated around the tire (12) to inspect the entire
circumference of the tire (12).
The
appellant explained the change as follows:
This corresponds exactly to the
wording chosen in the first paragraph on page 8 of the originally filed
description, which the Board of Appeal also used as the basis for the newly
added feature, see lines 1 to 3 on page 6 of the Board of Appeal's
decision. This makes it even clearer what is to be claimed according to
the invention.
In terms of content, this
clarification does not result in any change to the claimed subject-matter, so
that the decision of the Board of Appeal with regard to the allowability of the
claims remains valid.
V.
In its examination communication of March 14, 2018, the examining division
announced its intention not to admit the set of claims filed on February 23,
2018 under Rule 137(3) EPC because the amendment of the claims was inconsistent
with Article 111(2) EPC be possible.
VI.
In a letter dated May 7, 2018, the appellant requested that a patent be granted
on the basis of the claims filed on February 23, 2018. Article 111(2) EPC is
not binding on the wording of the claim according to the wording of decision T
1891/12 of July 10, 2017. In the present case, the applicant is requesting
amendments to the wording of the claim on which this decision of the Board of
Appeal is based, thereby changing the facts of the case. She also asked for an
appealable decision to be issued if the Examining Division maintained the view
expressed in the examination communication of 14 March 2018 that there was no
way to amend the claims.
VII.
With its decision of 4 June 2018, the examining division refused the
application under Article 97(2) EPC. As justification, she explained that
the appellant's arguments in the letter of May 7, 2018 could not be understood
because the amendments submitted in the letter of February 23, 2018 did not
change the facts. Such an interpretation of Art. 111(2) EPC would have the
unacceptable consequence that, by filing any request, a party would be able to
reopen the proceedings at first instance at will.
The
result of the clear decision formula was that the documents, i.e. description,
claims, drawings, were res judicata and could no longer be touched.
Therefore,
the present set of claims, filed on 23 February 2018, is not admitted under
Rule 137(3) EPC because the amendment to claim 1 contradicts Article 111(2)
EPC. The examining division is bound by the Board of Appeal's legal
assessment on which the decision is based, insofar as the facts are the
same. Since the main request was not to be admitted into the proceedings
and there were no other requests, a set of claims in the proceedings was
missing. The application therefore does not meet the requirements of Art.
78(1)(c) EPC. Therefore, a patent could not be granted under Article 97(1)
EPC.
VIII.
Grounds of appeal of September 27, 2018
a)
Absolute commitment to the decision formula
In
its statement of grounds of appeal, the appellant submits that the examining
division's assumption that Article 111(2) EPC is absolutely binding on the
formula of the decision cannot be upheld. Article 111(2) EPC merely stated
that the examining division was bound by the legal assessment of the Board of
Appeal, and then only to the extent that the facts were the same.
The
Examining Division's reference to res judicata is therefore also
misguided. It is also not otherwise apparent why the scope of application
of general legal principles such as that of the res judicata could be opened up
at all in the present case, since there is obviously no loophole in the
regulations. Nor is it clear why the legal principle of res judicata
should lead to an absolute binding to the wording of the decision formula.
Binding
the examining division to decision T 1891/12 under Article 111(2) EPC could
therefore only have prevented a grant as amended if the legal assessment on
which this decision was based would not have permitted such an
amendment. However, the contested decision of the examining division does
not claim this. You do not even deal with this legal assessment.
Furthermore,
even this link to the legal assessment of the Board of Appeal under Article
111(2) EPC only applied insofar as the facts were the same. Article 111(2)
EPC thus explicitly provides that the facts on which the Board of Appeal's
legal assessment was based and the facts on which the examining division had to
decide do not have to be identical.
If,
as in the present case, the applicant requests changes to the version of the
claim on which the decision of the Board of Appeal is based, and thus changes
the facts, there is no longer a binding effect with regard to the changed
features anyway. That this is possible follows directly from the fact that
Article 111(2) EPC regulates precisely this case.
The
examining division, on the other hand, asserted that the facts had not changed
as a result of the changes to the wording of the claim. However, this
argument cannot support the refusal of the application. If the facts of
the case had not changed as a result of the requested amendment, there would
certainly be no reason not to follow the applicant's request.
Furthermore,
the facts have changed insofar as the applicant requested grant in the version
of the main request at the time in the oral hearing on July 10, 2017, so that
the Board of Appeal could only decide on this request. In response to the
communication under Rule 71(3) EPC, however, the applicant had requested grant
in a version amended for this purpose. With regard to the amendments made, the
decision of the Board of Appeal cannot therefore have any binding effect.
The
examining division only countered that "such an interpretation of Art.
111(2) EPC would mean that a party, by filing any request, would be able to
reopen the proceedings at first instance at will, which would be against the
spirit and purpose of this article". However, the examining division
misjudged the meaning and purpose of Article 111(2) EPC, which, according to
the system of the EPC, should not restrict the applicant's design options and,
according to the meaning and purpose, is not even aimed at the applicant, but
rather should be binding on the examining division and thus ensure that an
applicant, after a successful appeal, is not faced with the same objections as
before the appeal.
Furthermore,
it is also incorrect that "a party, by filing any application, would be
able to reopen the proceedings in the first instance at will". According
to Rule 137(3) EPC, amendments to the application generally require the
approval of the examining division. It is therefore at the discretion of the
examining division to reopen the procedure if the application has changed.
According to the system of the EPC, Rule 137(3) EPC and the discretion thus
granted to the examining division is the provision intended to prevent an
abusive reopening of the examination procedure by the applicant, but not
Article 111(2) EPC, which on the contrary protects the rights of the protect
the applicant.
Therefore,
Article 111(2) EPC could not prevent an applicant from correcting problems in
the wording of the claim which had not come to light during the appeal
proceedings before the patent was granted.
b) Lack of Discretion
The
appellant submits that the examining division should have duly exercised the discretion
conferred on it under Rule 137(3) EPC with regard to the applicant's amended
request. Such discretion was not exercised, since the Examining Division
did not see itself in a position from the outset to grant the application in
any other version than that approved by the Board of Appeal. This was a
serious procedural error, which made the present appeal
necessary. Therefore, the appeal fee should be refunded.
c) The appellant then explains why the new set of
claims is in line with the legal assessment of the Board of Appeal in the
decision under appeal and is therefore allowable.
d) Furthermore, she makes statements on her
interests: the applicant and the public would have to fear disadvantages if the
previous wording of the claim were to remain. On the one hand, this applies to
possible ambiguities about the exact scope of protection of the patent due to
different wording of the same feature in the claims and the description. On the
other hand, a possible line of attack on the original disclosure of claim 1 of
the patent would be opened up under Article 123(2) EPC.
e) In the alternative, in the event that the Board
of Appeal does not follow the appellant's view and should reject the request
for grant as amended (see below, point IX, request under point 1), the
appellant declares its consent to the Version in which the examining division
"intends" to grant the patent. Since the basis for the rejection
decision is thus withdrawn, it is to be annulled and the application for grant
in the version of the printed copy is to be "rejected".
IX. The appellant requests
1. Annul the decision of the
examining division of June 4th, 2018 and grant the present application on the
basis of the amended patent claims filed by letter of July 10th, 2017
[apparently meaning: dated February 23rd, 2018] and
2. refund the appeal fee,
3. In the alternative, remit the
application to the examining division for grant in the version of the printed
copy [ie the grant documents sent to the appellant with the communication under
Rule 71(3) EPC of 03.11.2017],
4. And alternatively, in the
event that the requests under 1. or 2. cannot already be granted in the written
procedure, to schedule oral proceedings before the Board of Appeal.
X.
On 17 October 2018 third-party observations under Article 115 EPC were
received.
XI. Notice
of summons dated February 25, 2021
In
the notice of summons, the Board of Appeal represented, among other things, the
following preliminary and non-binding assessment of the main request, which is
reproduced verbatim below in excerpts:
1.
The central question of law in the present appeal proceedings is whether, in a
case where the Board of Appeal instructs the examining division to grant a
patent in a precisely specified version, the examining division, at the applicant's
request, grants a patent in a different version, here with different claims,
can and, if necessary, must.
2.
Article 111 EPC, headed "Decision on the appeal" and relevant to the
present proceedings, reads as follows:
(1) After examining whether the appeal
is well-founded, the Board of Appeal shall decide on the appeal. The Board
of Appeal either acts within the competence of the body that issued the
contested decision or remits the matter to that body for further prosecution.
(2) If the Board of Appeal remits
the matter for further prosecution to the department which issued the contested
decision, that department shall be bound by the legal assessment of the Board
of Appeal on which the decision is based, in so far as the facts are the
same. ...
(own
emphasis)
3.
According to this, after examining the merits of an appeal, a Board of Appeal
has two alternative decision options, which are mutually exclusive:
-
action "within the competence of the organ ... which issued the contested
decision", i.e. the organ of first instance, pursuant to paragraph 1,
sentence 2, variant 1 of Article 111 EPC ("variant 1")
or
-
The referral of the matter back to this (first instance) body for further
decision in accordance with paragraph 1, sentence 2, variant 2 of Article 111
EPC ("variant 2"). The provisions of Article 111 (2) EPC apply
only to variant 2.
If,
in the case of variant 1, the board acts within the competence of the examining
division and decides that a patent is to be granted in a specific text, it
cannot carry out such a grant itself under the provisions of the
EPC. Rather, according to Rule 71(3) EPC, the board needs the support of
the examining division by issuing a corresponding
communication. Consequently, a remittal to the examining division to carry
out the administrative measures referred to in Rule 71(3) EPC is mandatory.
However,
such a remittal is not one "for further decision", but merely for the
implementation of the order for the grant of the patent in a specific version
by the Board of Appeal. The Examination Division is only authorized and obliged
to implement this. It has no discretion of its own regarding the documents with
which the Board of Appeal ordered the grant of the patent. This is clear from
paragraph 2 of Article 111 EPC, which only refers to variant 2.
Applying
paragraph 2 to variant 1 would contradict the logic of the law: if the Board of
Appeal orders a grant with precisely identified documents, applying paragraph
2, which requires the examining division to take a further decision, and thus a
previous examination, would violate this order contradict.
The
legal principle that applies to variant 1 of the obligation to grant with
precisely the documents specified by the Board of Appeal is that of res
judicata.
The
legal principle, which is decisive in the case of variant 2 codified in Article
111(2) EPC, namely the binding to the legal assessment of the Board of Appeal
in the case of identical facts in the further decision, is irrelevant in the
case of variant 1, since the examining division in variant 1 - as explained -
does not make its own decision, but merely implements the external decision of
the Board of Appeal.
The
above principles are confirmed by the decision in case J 8/98 of 6 May 1999 (OJ
EPO 1999, 687). There it says (in the German translation under No. 2.1):
... The decision of a board to determine
the version in which the patent is to be granted or maintained has the effect
that this version becomes a res judicata and can no longer be changed in
proceedings before the EPO (T 843/91 , OJ EPO 1994, 818).
XII. Response
to the summons
In
its reply to the summons of 26 April 2021 (hereinafter also:
"Response"), the appellant submitted that the Board of Appeal argued
in the summons that Article 111(2) EPC was not applicable to the present case,
but Article 111(1) EPC. This argument cannot be followed.
Under
Rule 71(3) EPC, the examining division could only decide to grant the European
patent after the communication under Rule 71(3) EPC had been made. However, if
the Examining Division were not empowered to make a final decision on grant at
this stage of the procedure, the Board of Appeal, acting within the competence
of the Examining Division, could not be empowered to do so either. Nor is this
a purely administrative requirement, since under Rule 71(6) EPC the applicant's
right to request justified amendments is linked to the time limit under Rule
71(3) EPC and thus the issue of this communication.
Moreover,
it is also not clear why the Board of Appeal would have to rely on a referral
back to the Examining Division. Since the Board of Appeal can act under
Article 111(1) EPC within the competence of the examining division, it would
not be barred from withdrawing a communication under Rule 71(3) EPC itself.
However,
if the Board of Appeal decides to take a different route and remits the matter
back to the examining division, it is not acting within the competence of the
examining division, since the decision to grant and thus the final decision is
made by the examining division.
The
Board of Appeal's decision to remit the matter back to the Examining Division
with the proviso that the patent should be granted on the basis of a precisely
specified text is therefore equivalent to an instruction to the Examining
Division to issue a communication under Rule 71(3) EPC. If interpreted
differently, a communication under Rule 71(3) EPC would be issued, but the
further legal consequences linked to it under Rule 71 would be undermined.
According
to Rule 71(6) EPC, the applicant has the opportunity to request reasoned
amendments or corrections in the text communicated to him within the time limit
for replying to the communication under Rule 71(3) EPC. This right
conferred on the applicant by Rule 71(6) EPC could not be overridden simply because
the Board of Appeal had previously dealt with the application.
Decision
J 8/98 is based on a different legal situation; the principles set out
therein are therefore no longer applicable.
However,
the principle of res judicata did not otherwise preclude the possibility of a
patent being granted on the basis of amendments filed in response to the
communication under Rule 71(3) EPC. Because the granting procedure only finds
its final conclusion with the granting decision. However, the Board of Appeal
did not issue such a decision. The only res judicata was therefore the fact
that the documents intended for grant at the time met the requirements of the
EPC. A stipulation in the sense that the grant had to be made on this basis was
not procedurally possible at the time under the rules of the EPC.
The
remittance to the Examining Division was therefore made for a further decision,
since only the Examining Division could and should have made the grant decision
ending the grant procedure.
XIII. Oral
hearing on May 27, 2021
The
discussion on the main request focused on the question of whether a decision by
a Board of Appeal remitting the matter to the Examining Division for the grant
of a European patent in a specified text would result in the patent application
not being amended even at the appellant's request can be.
The
appellant suggested that the board should consider referring this question to
the Enlarged Board of Appeal. However, she explained that she expressly
did not submit any application for their submission.
With
regard to the request for reimbursement of the appeal fee, the question was
discussed in particular as to whether a positive decision on the main request
would result in a substantive error or an independent procedural error due to
the examining division not exercising its discretion (see J 12/19, no. 3 in
conjunction with no. 2.5).
The
appellant requested that the decision of the examining division of June 4, 2018
be set aside and that the present application be granted on the basis of the
amended claims filed by letter of February 23, 2018 and the appeal fee be
reimbursed, alternatively the application to the examining division for grant
in the version of printed copy, i.e. the grant documents sent to the appellant
with the communication under Rule 71(3) EPC of 3 November 2017.
After
deliberation by the Board, the chairman declared that the substantive debate
was over and that a decision in the written procedure would be made on August
27, 2021.
XIV.
Appellant's Opinion
In
its statement of June 7, 2021, following the oral proceedings before the board
(hereinafter also: "statement"), the appellant once again summarized
some of the legal considerations discussed there.
XV. Further
third-party observations under Article 115 EPC from the third party who had
already filed such observations on 17 October 2018 (above, point X) were
received on 22 June 2021.
XVI In
a communication from the Board's Registry dated August 26, 2021, the appellant
was informed of November 15, 2021 as the new date for a written decision.
Reasons for decision
1.
By the decision under appeal of 4 June 2018, the examining division did not
admit the set of claims filed on 23 February 2018 under Rule 137(3) EPC to the
proceedings because the amendment in claim 1 contradicted Article 111(2) EPC.
The clear wording of the Board of Appeal's decision in case T 1891/12 of 10
July 2017 meant that the documents, i.e. description, claims and drawings, were
res judicata and could no longer be touched. Since the main request was not to
be admitted to the proceedings and there were no other requests, a set of
claims in the process was missing. The application therefore does not meet the
requirements of Art. 78(1)(c) EPC. Therefore, a patent could not be granted
under Article 97(1) EPC.
This
decision would have to be set aside if the examining division wrongly
considered that admitting the main request and sole request to the procedure
was not possible in view of the decision-making in T 1891/12. That depends on
the legal effects that the decision in this matter has.
In
examining the appeal, the Board of Appeal will take into account the
appellant's comments received after the oral proceedings of 27 May 2021, at the
end of which the debate was closed. This is because it reflects the
appellant's position based on the discussions in the oral proceedings and is
therefore helpful for a comprehensive discussion of the case in the present
decision. The Board reopened the debate solely for the purpose of
admitting the opinion [of the appellant] and further third party observations
of 22 June 2021.
Main request
2. The Board of Appeal's decision in case T 1891/12
In
the course of oral proceedings before the board in the same composition on July
10, 2017, the appellant filed amended claims 1 - 12 and an amended description
in accordance with the main request and withdrew all other requests. The Board
admitted this last, only request to the procedure. A legal basis for examining
the appeal, in particular this request, and ordering the remittal for grant was
not expressly mentioned in the reasoned written decision. In particular, it did
not address Article 111 EPC.
However,
the decision is inherent in the fact that the appeal was well-founded within
the meaning of this provision, since the only request examined was not the subject of the
first-instance proceedings, so that the first-instance decision had no
basis. This follows from the scheme of Article 111(1) EPC, which reads:
Following the examination as to
the allowability of the appeal, the Board of Appeal shall decide on the appeal.
The Board of Appeal may either exercise any power within the competence of the
department which was responsible for the decision appealed or remit the case to
that department for further prosecution.
Accordingly,
these provisions provide for a two-stage action by the Board of Appeal (cf. T
1090/12, point 4):
First,
the merits of the appeal are examined, which is (already) the case within the
meaning of this provision if the contested decision cannot be upheld (in the
case cited due to an incorrect assessment of the requirement of clarity), even
if only that the or the request(s) on which this is based are no longer upheld
in the appeal proceedings, but the appeal - as usual - cannot be dismissed
without further examination.
In a second step, the Board then exercises its discretion in accordance
with the wording of Article 111(1), second sentence, EPC, to
-
either act within the competence of the organ of first instance,
-
or refer the matter back to that body of first instance.
In
the present case, the board examined claim 1 of the sole request submitted at
the oral proceedings before the board with regard to Article 123(2) EPC,
Articles 84, 54 and 56 EPC 1973 and the existence of the prerequisites of these
regulations affirmed.
In
the decision formula, the board ordered the grant of a patent with complete
documents, i.e. clearly defined claims, description pages and drawings, and remitted
the matter for grant to the department of first instance.
The
question to be examined is what legal effects were triggered by the remittance
for grant with precisely defined documents, in particular in which way the
board applied Article 111 EPC in this respect. In any case, in the absence
of relevant information in the decision, the answer must be given from an
objective point of view. The appellant obviously also assumes this (see
below, No. 3.1). In this context, it is also necessary to examine in
particular whether the decision of the Board was absolutely binding for the
examining division, which - as will be shown - can also be described as
substantive legal force.
3. The legal effects of the decision in case T 1891/12
3.1 The appellant's view on the application of Article 111 EPC and on res
judicata
The
appellant assumes that the remittal to the examining division "for a
further decision" pursuant to Article 111(1), second sentence, EPC was
made, since only the latter could and should have made the grant decision
terminating the grant procedure (see above, Facts & Requests no. XII at the
end).
The
Appellant further takes the view that certain legal effects resulting from
decisions of the Boards of Appeal are attributed to a principle of Rechtskraft in European patent law; for this purpose
it also uses the concept of res judicata, which from the point of view of the
adjudicating Board is identical. She initially held that its application
in the present case was not necessary in view of the legal provision in Article
111(2) EPC (statement of appeal, above, point VIII.a, second
paragraph). In the reply to the notice of summons, however, she then
states:
The only res judicata to be
considered is the fact that the documents intended for grant at that time [in
decision T 1891/12] meet the requirements of the EPC. (Page 4, penultimate
paragraph).
In
her later statement following the hearing, she said:
However, even if the Board of
Appeal acted within the competence of the examining division in the decision of
07/10/2017, the decision based on this activity can only form res judicata to
the extent that a final decision was admissible at the relevant
time. Because res judicata can only become what was actually ripe for
decision at the appropriate time. (p. 4 above, no. 3, Opinion of 7 June
2021, own emphasis)
The
appellant then explains (ibid., pp. 4-5, no. 4):
However, if the Board of Appeal
acts within the competence of the examining division, the rules governing the
procedure before the examining division under Rule 100(1) EPC also apply to the
Board of Appeal.
In the present case, these are
Rules 71(3) and 71(6) EPC, which stipulate that before a decision is taken to
grant the European patent, the applicant must be informed of the text in which
the European patent is to be granted, whereby the applicant can request
justified amendments and corrections within a period of 4 months in response to
such a notification.
If a Board of Appeal actually
wanted to make a final decision on the grant of a patent, it would have to
issue a corresponding communication under Rule 71(3) EPC [sic] itself in order
to create the conditions for such a decision.
However, if the Board of Appeal
leaves this up to the examining division, it cannot make a final decision on
grant either, since the prerequisites for such a decision have not yet been
met.
This means that the version that
the Board of Appeal intended for grant cannot become a res judicata
either. Otherwise, the mere act of the Board of Appeal undermining the
applicant's rights under Rule 71(6) EPC.
The
Board recalls the wording of the two provisions below.
Rule
71(3) EPC reads:
Before the Examining Division
decides to grant the European patent, it shall inform the applicant of the text
in which it intends to grant it and of the related bibliographic data. In this
communication the Examining Division shall invite the applicant to pay the fee
for grant and publishing and to file a translation of the claims in the two
official languages of the European Patent Office other than the language of the
proceedings within four months.
Rule
71(6) EPC reads:
If the applicant, within the period
under paragraph 3, requests reasoned amendments or corrections to the
communicated text or keeps to the latest text submitted by him, the Examining
Division shall issue a new communication under paragraph 3 if it gives its
consent; otherwise it shall resume the examination proceedings.
3.2 Binding Effect/Res judicata of Boards of Appeal Decisions on Remittal
to Grant/Maintenance of a Patent According to Case Law
The
concept of Rechtskraft or res judicata is not expressly mentioned in the
EPC. The boards have assumed in several decisions (T 934/91, confirmed in
T 113/92; T 843/91 of 5 August 1993, confirmed in T 609/94, J 8/98, and T
694/01) that decisions of the Boards of Appeal are final. In any case, the
consequence of this is that a decision by a Board on the version of a patent is
binding on the first instance, so that this version can no longer be changed in
proceedings before the EPO. The term res iudicata is also used in this
context (see the citations from the decisions below).
T 934/91 of 4 August 1992 and confirming decision
According
to T 934/91, confirmed in T 113/92, final decisions of the boards are "res
judicata and final". The scope of the principle of res iudicata
should be understood as defined in Black's Standard US Legal Dictionary for the
common law community, i.e. as a final determination of rights in a particular
matter. See the excerpts from the two decisions below.
T
934/91 of 4 August 1992 (OJ EPO 1994, 184), headnote according to the official
German translation:
Their decisions [of the Boards of
Appeal] are res judicata and final (cf. Reasons, points 3 and 4).
One could correctly translate:
"... are res judicata (final) and final".
3. ... Res judicata is an old
legal term whose meaning is undisputed: It describes "a matter about which
a competent court has made a final decision, whereby the rights of the parties
and the persons standing in a legal relationship with them in this matter are
final are specified" (cf. Black's Law Dictionary, 5th edition).
No
reference was made to the (presumably US) case law on which this definition is
apparently based.
T 113/92 of December 17, 1992 (emphasis added)
1. ... However, the appellants'
attempt to obtain an amendment or annulment of the substantive decision already
made by the board by way of an appeal against a decision of the lower court on
the adaptation of the description that the board had ordered and carried out
must fail. In the previous appeal proceedings T 317/88 the board made a final
substantive decision on June 13, 1991 and ordered the patent to be maintained
on the basis of claims 1 to 8 according to the main request and a description
still to be adapted. The content and wording of the claims are therefore res
judicata and not the subject of the pending appeal proceedings T 113/92
(see the detailed explanations in the publication for publication in OJEPO
decision T 934/91 of 4 August 1992).
T
934/91 and T 113/92 therefore apparently assume that the decision on the claims
was based on Article 111(1), first sentence, variant 1, EPC
1973. Article 111 is the same wording in the 1973 and 2000 versions of the
EPC.
T 843/91 of 5 August 1993 and confirming decisions
In
T 843/91 of 5 August 1993 (OJ EPO 1994, 832), point 3.4.1, Article 106(1) EPC
1973 (identical to Article 106(1) EPC 2000) became the sole provision of the
EPC for the justification of the finality of a decision as to the
patentability of the subject-matter of claims. In this respect, the Board had
acted within the scope of the competence of the first instance. The decision
was therefore based on variant 1 of Article 111(1), second sentence, EPC
1973. The board also emphasized that a remittance with Variant 2 as the legal
basis was only made with a view to adapting the description. A remittal to
carry out administrative measures according to the implementation regulations
is not mentioned. The relevant passage from the decision reads (in the official
German translation; own emphasis):
Accordingly, in the board's view,
the decision [inter alia: maintenance of the patent according to the main
request] must be read in conjunction with the reasons for the decision as a
whole and understood that the board, with regard to the patentability of
the subject-matter of the above claims and their wording within the
jurisdiction of the department that issued the contested decision itself made a
decision which is final [original: "which decision is final"] (Art.
106(1) EPC; see also No. 6.1 of the interlocutory decision of 17 March 1993 in
this case and the Board's considerations on the appellant's request 2 set out
below under point 4). Only in the remaining part of the decision formula,
which was not directly relevant to the core issue of patentability before the
board and concerned the correct adaptation of the description, the board actually
made use of the second option provided for in Article 111(1) EPC and remitted
the case to the opposition division. This interpretation of a
decision-formula constructed in this way is undoubtedly also in line with other
decisions of the boards of appeal (e.g. T 757/91 of 10 March 1992, point 2.2 of
the reasons for the decision and T 113/92 of 17 December 1992, point 1 the
reasons for the decision).This interpretation of a decision-formula constructed
in this way is undoubtedly also in line with other decisions of the boards of
appeal (e.g. T 757/91 of 10 March 1992, point 2.2 of the reasons for the
decision and T 113/92 of 17 December 1992, point 1 the reasons for the
decision).This interpretation of a decision-formula constructed in this way is
undoubtedly also in line with other decisions of the boards of appeal (e.g. T
757/91 of 10 March 1992, point 2.2 of the reasons for the decision and T 113/92
of 17 December 1992, point 1 the reasons for the decision).
Article
106(1) EPC 1973 was thus used for the substantive (substantive) binding effect
of the decision, although this provision says nothing about this. From this
provision, which names the decisions that can be appealed, it only follows that
- since the decisions of the Boards of Appeal are not named - these cannot be
appealed. Article 106(1), first sentence, EPC 1973 does not determine the full
scope of the legal effects of non-appealability. Sentence 2 only determines a
legal effect, namely that the appeal has a suspensive effect. However, their
legal effects in terms of content cannot be inferred from this.
Several
decisions - reproduced below in excerpts (with own emphasis) - have expressly
confirmed T 843/91 without making their own statements on the basis and extent
of the substantive binding: T 609/94, J 8/98 and T 694/01.
T 609/94
2.2. According to Article 111(2)
EPC it is assumed that the Board took one or several partial decisions and, for
the rest, remitted the case for further prosecution and decision to the first
instance. The opposition procedure is resumed for the remaining part to be
decided - in the present case above all the question of inventive step had to
be investigated. In doing so, it is a matter of course that the patentee, also
at this stage of the procedure, should have the opportunity to modify the
claims (following decision T 0027/94, unpublished). Thereby the modified claims
may not be in conflict with the ratio decidendi of the earlier decision of the
Board of Appeal.
2.3. It is a different
situation if the Board dismissed the decision under appeal and remitted the
case to the first instance with the order to maintain a patent with claims
whose wording had been defined by the Board. In such a case (as cited in
decision T 0843/91 by Respondent II), the first instance is not entitled to
admit amended claims, since they are part of the res judicata of the decision
of the Board.
J 8/98 (OJ EPO 1999, 687; excerpt from the official German
translation)
2.1 ... The decision of a board determining
the text in which the patent is to be granted or maintained has the effect that
this text becomes res judicata and can no longer be amended in proceedings
before the EPO (T 843/ 91, OJ EPO 1994, 818).
T 694/01 (OJ EPO 2003, 250)
2.8 ...A decision remitting a
case to the opposition division with the order to maintain a patent on the
basis of amended claims is binding in the sense that neither the wording nor
the patentability of these claims may be further challenged in subsequent
proceedings before the EPO. A finding of fact upon which this decision rests, i.e.
a finding which is a conditio sine qua non for the decision, is equally
binding. Such a finding of fact is therefore not open to reconsideration pursuant
to Article 111(2) EPC (T 843/91; EPO OJ 1994, 832).
Since
it is desirable for the case law of the boards of appeal and that of the
national courts to be uniform, the reasons for the decision of the German
Federal Court of Justice (BGH) of April 17, 2012 (X ZR 55/09 - ink cartridge
III; available on the website of the BGH www.bundesgerichtshof.de) reproduced
in part (with own emphasis). In this judgment, the BGH assumes that the content
of a decision by the Board of Appeal on the maintenance of a patent is bound to
a precisely defined extent. However, in his view (see point 18) the remittance
to the opposition division for maintenance is a remittance under Article
111(1), second variant, EPC, i.e. for further decision by the opposition
division.
[15] a) Although the decision by
which the Board of Appeal instructs the Opposition Division to maintain the
patent to a precisely defined extent is ... a genuine substantive decision, by
which the Board of Appeal is substantively and formally final and binding on
the Opposition Division as to patentability of the subject-matter of the patent
claims to be maintained (Benkard/Günzel, EPC, 2002, Art. 111 EPC, para. 49 et
seq.; Schulte/Moufang, PatG with EPC, 8th ed., 2008, Art. 111 EPC, para. 35;
Singer/Stauder/Joos, EPC, 5th edition, 2010, Art. 111 EPC para. 9). ...
[16] b) However, a decision in
which the board of appeal instructs the opposition division to maintain the
patent with a certain content does not interfere with the formal existence
of the patent (note for better comprehensibility: (yet)). ...
[18] According to Art. 111(1),
first sentence, EPC, the Technical Board of Appeal can either decide the matter
itself within the scope of the powers of the opposition division or refer the
matter back to the opposition division for further decision. If she
chooses the latter procedure, as in the case at hand, the appeal decision does not
yet result in the maintenance of the patent in the amended scope and its
revocation in other respects.
Rather, the Board of Appeal
remits the case to the Opposition Division so that the patent proprietor can
first meet the formal requirements specified there within a period of three
months after a request pursuant to Rule 82 (2) of the Implementing Regulations
to the Convention on the Grant of European Patents . These formal requirements
are the payment of the prescribed fee (printing fee) and the translations of
the amended patent claims into the two official languages of the European
Patent Office that are not the language of the proceedings. If the actions
required under Rule 82 (2) EPC are not taken in good time, they can be taken
within two months of notification of the missed deadline, if an additional fee
is paid within this period (Rule 82 (3) sentence 1 EPC).
[19] Only when these
formal requirements are either met or can no longer be met and the opposition
division either revokes the patent (Article 101(3)(b) EPC, Rule 82(3) sentence
2) or maintains the patent as amended (Article 101(3)(a) EPC), the patent changes
its legal form and loses its effect either entirely or to the extent that
its subject-matter extends beyond the limited version.
3.3 The decision-making options under Articles 111(1), second sentence, and
111(2) EPC
In
order to clarify the scope of a possible substantive binding effect of the
Board's decision in the present case, it is first examined which decision
options Article 111(1), second sentence, and 111(2) EPC offers in the event
that an appeal is well-founded under Article 111(1), first sentence, EPC (see
above, no. 1) generally offers. Section 3.4 below then examines how the
Board applied Art. 111(1), second sentence, EPC - viewed objectively - i.e.,
whether it based its decision on variant 1, variant 2 or both variants.
The
content of Article 111(1), second sentence, EPC is to be determined by looking
at the three language versions together. These are (with own emphasis):
Die Beschwerdekammer wird entweder
- im Rahmen der Zuständigkeit des Organs tätig, das die angefochtene
Entscheidung erlassen hat [Variante 1], oder
- verweist die Angelegenheit zur
weiteren Entscheidung an dieses Organ zurück [Variante 2].
EN (English
language version)
The Board of Appeal may either
- exercise any power within the
competence of the department which was responsible for the decision appealed or
- remit the case to that
department for further prosecution.
FR
(French language version)
Elle [la chambre de recours] peut soit
- exercer les compétences de l'instance qui a rendu la décision attaquée,
soit
- renvoyer l'affaire à ladite instance pour
suite à donner.
In
examining the meaning of Variant 2 of these three language versions, when
considering these versions together, the first thing to note is that
- - the
wording of the German language version is aimed at a "further"
decision; the board notes that in order to arrive at a decision (mainly a
decision to grant under Article 97(1) in conjunction with Rule 71a(1) EPC or a
refusal under Article 97(2) EPC), further examination is first necessary;
- - the
English language version with the term "further prosecution" orders a
further examination;
- - the
French language version leaves it at that follow-up action is to be taken:
"pour suite à donner".
The
appellant believes (last paragraph of no. 1, page 2 of the opinion) that
Variant 2 simply means a remittance for further processing, regardless of the
type of processing, i.e. no specific remittance for processing with regard to
content. In the Board's opinion, however, this result could only be based
on the French version. After the above overview of all three language
versions, Article 111(1), second sentence, variant 2, EPC would rather be
understood as follows:
The Board of Appeal will either
- acting within the competence of
the body that issued the contested decision [variant 1], or
- refers the matter back to this
body for further [deleted: decision] examination and, if
necessary, further decision on the basis of the examination result [variant 2].
In
the present case, after the Board itself decided what to assign to Variant 1
and referred back to the first instance, which according to the wording is only
possible under Variant 2, the question arises as to whether a remittal to
Variant 1 alone or can be based on both variants. In the oral proceedings, the
appellant spoke of a "mixed form" with regard to the latter case
(both variants), which was not covered by the wording of Art. 111(1), second
sentence, EPC. Because there the two possibilities are mentioned as
alternatives (either - or), i.e., mutually exclusive.
The
Board notes that the application of a mixed form with regard to the remittance
to adapt the description according to variant 2, after a complete internal
examination of the matter according to variant 1, already results from two of
the decisions cited above (under point 3.2) (T 113/92, T 843/91).
In
addition, in the practice of the Boards of Appeal, after the result of the
examination that the decision is to be set aside, i.e., the appeal is
"founded" within the meaning of Article 111(1) EPC, some of the
resulting substantive examination points are sometimes clarified in the context
of a request, i.e., a Conducted part of the examination itself, particularly
for novelty, and then remitted back to the inventive step examination. Even an
examination of the inventive step on the basis of certain prior art, for
example already in the process, but remittal to enable further search, takes
place in practice. See, for example, recently T 2296/14 (particularly points
7.1 and 7.2).
In
the opinion of the adjudicating Board, this practice is not legally
objectionable. It is in the interest of procedural economy if a board gives a
binding answer (which follows from Article 111(2) EPC) to questions which a
board regards as requiring clarification, in order to rule out a new appeal in
this respect. This goal of procedural economy is also the basis of Article 11
RPBA 2020, according to which referrals should only be made in exceptional
cases. According to the explanations given, its "aim is to reduce the
likelihood of a ping-pong effect between the Boards of Appeal and the
department of first instance and the associated undue delay in the overall
proceedings before the European Patent Office." (see the explanations
on Article 11 RPBA in the Official Journal EPO 2020, Supplementary Publication
2, page 26).
This
practice can be based on Article 111(1), second sentence, EPC as a whole, i.e.,
variant 1 and 2 taken together. The wording of these provisions does not
preclude the board from dividing the decision on the appeal into its own
examination and remittance according to the respective topic, i.e., as
explained above, e.g., into novelty and inventive step.
What
applies to the examination of the individual requirements for the allowability
of an application also applies to the examination of several requests: the
Boards also practice the complete examination of individual requests and the
remittal for examination in relation to an auxiliary requests. See the
following examples from their decision-making practice:
T 79/89 (OJ EPO 1992, 283; extract from the official German
translation)
3. Legal effect of the earlier
decision of the Board of Appeal
In the present case, the board
rejected the appellant's main request and referred the case back to the
department of first instance for further decision on the basis of the auxiliary
request. In these circumstances, Article 111(2) EPC applies; according
to this, the organ of first instance is "bound by the legal assessment of
the Board of Appeal on which the decision is based, insofar as the facts are
the same". In its earlier decision, the Board of Appeal came to the conclusion
that the subject-matter of the main request was not allowable, but that the
grant of a patent in accordance with the auxiliary request seemed possible -
subject to the examination of its patentability by the Examining Division.
T 1630/08
2.3.1 In the appeal T 1206/01 the
board decided to remit the case to the first instance "for further
prosecution on the basis of the second auxiliary request submitted at the oral
proceedings on 23 September 2004."
T 383/11
1.2 ... In point 12 of the
reasons for the decision entitled "Remittal to the first instance for
further prosecution", the Board decided to remit the case to the
department of first instance for further prosecution, noting in particular that
the amendments made according to claim 1 of the third auxiliary request and the
attempt to introduce into the proceedings a new document... had created an
entirely new situation that had not been considered in the contested [first]
decision. It is evident from this reasoning that for the Board the purpose of
the remittal was to allow further prosecution on the basis of the new situation
that had been instrumental in bringing it about. In other words, the third
auxiliary request was to be the basis for the further prosecution, taking due
account of the Board's judgment on the issues of Articles 123(2) and 83 EPC.
Art.
111(1), second sentence, EPC can therefore be read in addition to the above
rewording so that it reads:
The Board of Appeal will either
- acting within the competence of
the body that issued the contested decision [variant 1], or, to the extent
that this is not done,
- refers the matter back to this
body for further [deleted: decision] examination and, if
necessary, further decision on the basis of the examination result
[variant 2].
In
view of all of the above, a mixture, i.e., an application of both variants of
Article 111(1), second sentence, EPC, is not ruled out in principle. The
following section examines whether there is a mixture in the present case or
whether the remittal can be based solely on Variant 1.
3.4 Remittal for grant with
precisely identified documents: due to a "mixture"
of variants 1 and 2 or due to variant 1 alone?
3.4.1 The Applicable Variant(s)
The
board did not refer to Article 111 EPC in decision T 1891/12 and accordingly
did not state whether it applied variant 1 or 2, or both in succession (own
decision, then remittal for implementation). In the oral proceedings, the
appellant took the view - as already explained - that a mixed form, i.e., an
application of both variants, was not covered by the wording of Article 111(1),
second sentence, EPC. However, as explained above, different mixed forms of
variants 1 and 2 are used by the boards with regard to the adaptation of the
description, concerning individual patenting requirements in relation to a
specific application and with regard to the examination of several
applications, without these mixed forms being objectionable.
In
the present case, the Board itself made a full decision on the matter, but then
referred it back, and only for grant, i.e., for the implementation of the full
decision. The former can clearly be assigned to variant 1, the latter to
variant 2 with regard to the remittance, but not the purpose of the remittance,
i.e., according to the correct reading "for further examination and, if
necessary, further decision on the basis of the examination result".
According
to the appellant, on the other hand, only variant 2 is applicable because of
the remittal; action by the board according to variant 1 "within the
competence" of the examining division would have required the necessary
administrative measures, in particular the issue of a communication under Rule
71(3) EPC, to be carried out by the board itself and not by the examining
division.
That
is not to be followed.
The
first argument against the application of Variant 2 by the Board in the
decision in question is that the Board examined the matter in full itself,
i.e., it worked within the area of responsibility of the Examining
Division. The same thing happened in T 843/91 above, where it was
expressly said that this was done on the basis of variant 1.
Above
all, however, arguments against the assumption of the application of variant 2
are that within its framework - as shown above (under no.3.2) - a further test
is to be carried out and, if necessary, a further decision to be made on the
basis of the test result. Paragraph 2 is exclusively assigned to this variant
according to its wording. In the English language version, the first instance
is bound by the ratio decidendi ("bound by the ratio decidendi"),
i.e. the "reason that bears the decision" (see T 934/91, No. 2 in the
official German translation). A binding to the ratio decidendi understood in
this way is out of the question in cases with a complete decision formula like
the present one. This is because such a link to the main reason for the Board's
decision is only relevant if the examining division still has scope for further
examination within the meaning of Art. 111 (1), sentence 2, variant 2 in
conjunction with paragraph 2.
No
other assessment follows from the German or French language version:
- durch die rechtliche Beurteilung der Beschwerdekammer, die der
Entscheidung zugrunde gelegt ist, gebunden
- liée par les motifs et le dispositif de la décision
These
language versions also prove that Variant 2 does not mean the case of a
complete implementation of the decision formula by the body of the first
instance. The German and English versions only focus on the reason or
reasons for the decision, as does the French. This only makes sense if the
first instance still has something to examine and - after this examination on
its basis - has to decide.
A
further examination and, if necessary, a decision according to variant 2 would
only be possible, in spite of the order by the Board of the grant with complete
documents, if the matter on which the Board decided changes again after being
referred back to the Examining Division in the further proceedings before it
could. That would be the case if - as the appellant assumes - after referral
back to the examining division, the applicants under Rule 71 (6) EPC could
still file amendments (or retain the last version submitted), as the wording of
the provision suggests. However, the application of Rule 71 (6) EPC is opposed
to the decision of the Board of Appeal having legal force, which does
not exist in the case of a grant proposal by the examining division. Rule 71(6)
EPC remains applicable to requests for correction, which are also provided for
in the provision, since corrections conceptually cannot change the content of
the text of the patent.
The
res judicata precludes the filing of amendments under Rule 71(6) EPC due to the
following considerations: After the ratio decidendi of a decision under
Variant 2 in conjunction with Article 111(2) EPC develops a binding effect for
further examination and, if necessary, a decision on the basis of the
examination result , insofar as the facts are identical, it must be concluded
that a decision based on variant 1 with full examination, in such a way that
the examining division has nothing left to examine, is fully binding. It
therefore becomes legally binding in its entirety, which can also be referred
to as "substantive" legal force. This is an expression of the
principle of res judicata in the EPC, which can be deduced from Article 111(2)
EPC for Variant 1, even if the wording of Article 111(2) EPC does not apply to
this variant. If "partial decisions" (i.e., legal assessments of the
Board) according to Variant 2 (with the facts remaining unchanged) become
binding, i.e., become legally binding, then full decisions according to Variant
1 must become legally binding. Further general statements on the scope of the
concept of substantive res judicata are not necessary in the context of the
present decision.
The
fact that the patent can only be granted later, if necessary, after the
administrative measures specified in Rule 71 EPC have been carried out (see
point 3.5 below), is relevant to the question of the finality of the decision
of the board which with the outcome of which has occurred is irrelevant. The
board's decision and the possible subsequent decision on the patent application
(decision to grant or refusal under Article 97 EPC) should be seen separately.
See the corresponding considerations in the decision of the Federal Court of
Justice (under No. 18-19) quoted in part above (under No. 3.2 at the end) on
the case of remittal to the opposition division to maintain a patent in an
amended scope.
The
primacy of Article 111 EPC as interpreted above over Rule 71(6) EPC with regard
to amendments follows from the EPC. Article 164(2)
EPC expressly provides:
In the event of inconsistency
between the provisions of the Convention and the provisions of the Implementing
Regulations, the provisions of the Convention shall prevail.
It also follows that Rule 100(1) EPC, according to the wording of
which Rule 71 (6) EPC on amendments would apply, is to be interpreted
restrictively - and excluding this applicability - in accordance with Article
111 EPC. According to this provision, the following applies (the
corresponding Rule 66 (1) EPC 1973 differs from this in terms of underlining
and deletion):
The rules for the procedure
before the body [deleted: the body] which issued the decision contested
by the appeal shall apply in the appeal proceedings [deleted: accordingly], unless
otherwise provided.
Die Vorschriften für das Verfahren vor dem Organ [deleted: der
Stelle], das die mit der Beschwerde angefochtene Entscheidung erlassen hat,
sind im Beschwerdeverfahren [deleted: entsprechend] anzuwenden, sofern nichts
anderes bestimmt ist.
This provision is to be understood in such a way that even "to the extent not otherwise specified", [sofern nichts anderes bestimmt ist] i.e., expressly stipulated in legal provisions, only those provisions of the Implementing Regulations which do not contradict higher-ranking law can be applied in the appeals procedure. This applies notwithstanding the fact that in Rule 100(1) EPC, unlike in Rule 66(1) EPC 1973, the restriction according to which the provisions are applicable "mutatis mutandis" in the English version no longer exists. This restriction was not reflected in the French language version of the EPC 1973 rule.
The
justification for the amendment (see OJ EPO, Special Edition No. 1 OJ EPO 2003,
159, 194 (below)) only says with regard to Rules 100 - 102: "Rules 100 to
102 are streamlined and their wording is oriented to the Adapted to the style
of the EPC 2000." In the English version, the term " gestrafft "
corresponds to "streamlined", in French "simplifié". No
further justification regarding Rule 100 was given.
This
justification is useless for Rule 100.
It could be understood to mean that the deletion of the words
"accordingly" or "mutatis mutandis" was merely of an
editorial nature, as these had no meaning in terms of content in the EPC 1973
anyway and were therefore superfluous. Or vice versa, that it goes without
saying that the regulations only apply accordingly and therefore no express
reference is required in the legal regulation.
In
view of the above-described priority relationship between the EPC and its
Implementing Regulations, however, this question is irrelevant. Therefore,
basing the non-application of the relevant legal provision at that time, Rule
51(4) EPC 1973 in the version before 1 July 2002, on Rule 66(1) EPC, according
to which it is "only to be applied mutatis mutandis", as done in J
8/98 (no 2.2), is at least incomplete, since it follows already from the
priority relationship between the EPC and the Implementing Regulations.
For
corresponding considerations, the fact that the administrative tasks relating
to the grant of a patent after remittal are assigned to the formalities
examiner for this purpose, due to the priority relationship of the relevant
provisions:
Within the scope of the
competence of the Examining Divisions of the EPO, employees who are not
technically trained or legally qualified examiners (formalities officers) are
also entrusted with the following tasks of the Examining Divisions:
9. Examination and communications
under Rule 71(3), (6) to (9) EPC; Adoption of the decision granting the
European patent (Rule 71(11) EPC).
(see Article 1(9) of the decision
of the President of the European Patent Office of 12 July 2007 on the
performance of certain duties incumbent on the examining or opposition
divisions by non-examiner staff, special edition No. 3/2007 OJ EPO, F. 2, pp.
106, 107)
have
no influence on the assessment of the binding effect of the decision of the Board
of Appeal.
After
all this, one of the appellant's core arguments has been defeated,
according to which the right of the board to make a final decision had to be
established and was lacking because of the interaction of Rules 71(3) and (6)
EPC, i.e. because of the possibility of amendments, or corrections to the
patent version communicated to him under Rule 71(6) EPC, the requirements for a
final decision are not yet met. The appellant's position, reproduced above
(point XII), according to which the right conferred on the applicant by Rule
71(6) EPC cannot be revoked solely because the Board of Appeal had previously
dealt with the application, is - in the absence of such a right in cases like
the present - irrelevant.
For
the sake of completeness, it should be added that the above considerations are
independent of whether the examining division or - which is not the case in
practice - the Board of Appeal issues a communication under Rule 71(3) EPC and
carries out the further procedural steps up to the possible grant itself.
According to the appellant, variant 1 of Rule 111(1), second sentence, EPC
would only apply if all these measures were taken by the Board of Appeal, i.e.
the Board of Appeal would act within the competence of the examining division.
If it were to act in this way, the question of the applicability of Rule 71(6)
EPC with regard to amendments would then logically arise. This would have to be
answered in the negative, however, because the Board of Appeal would then be
bound by its own decision.
3.4.2 Legal Basis for Remittal
The
same applies to another core argument, namely the applicability of variant 2,
which expressly includes the matter being referred back to the examining
division.
The
legal basis on which the remittal can be based is Variant 1, even if the remittal
is not mentioned there. One has to draw the (further) conclusion from Variant 2
(in addition to the above conclusion regarding the complete binding effect of a
complete decision) that if a remittal for further examination (and possibly
another decision on the basis of the examination result) can take place, this
applies all the more if a remittal is only issued to carry out administrative
measures to implement a comprehensive decision according to Variant 1, which
may lead to a decision to grant under Article 97(1) in conjunction with Rule
71a(1) EPC. The decision to grant ends, regardless of whether variant 1 or 2 of
Article 111(1), second sentence, EPC applies, always the examination procedure in
the event that a patent version is allowable. After all, a remittal to
implement a comprehensive decision according to Variant 1 is not a remittance
in the sense of Variant 2, which would apply in addition to Variant 1, but a
remittal exclusively according to Variant 1.
This
result is consistent with the explanations on Article 11 of the Rules of
Procedure of the Boards of Appeal (RPBA) 2020. However, since this
provision is also subordinate to the EPC, it can only confirm this
result. Article 11 reads:
A Board will only refer the matter
back to the body that issued the contested decision for further prosecution if
there are particular reasons to do so.
In
the explanations it says:
The proposed new Article 11 only
applies where there is a remittal "for further prosecution". In
particular, it does not cover cases in which the board remits the matter with
an order to grant a patent or to maintain a patent in amended form, with or
without adapting the description.
From
these explanations alone - without the above interpretation of Article 111 EPC
- it could not be concluded that a remittal with a comprehensive decision does
not fall directly under the variant 2 provision of Article 111(2) EPC. With
regard to the above interpretation of Article 111 EPC, however, the question is
irrelevant, since the Explanatory Notes are consistent with this insofar as the
remittal is for grant with complete documentation, i.e. not for grant and
adaptation of the description.
3.5 Consequences
A
remittal with an order to the examining division to grant a patent in a
specific version, i.e. with precisely identified documents - as in the case of
decision T 1891/12 - is based on variant 1 of Article 111(1), second sentence,
EPC. This instructs the examining division to issue a communication under Rule
71(3) EPC. In it, the examining division informs the applicant that it intends
to grant a patent in the text specified in the decision of the Board of Appeal
(together with the relevant bibliographic data). Furthermore, it asks the
applicant to pay the fee for grant and publication within a period of four
months and to file a translation of the patent claims in the two official
languages of the European Patent Office which are not the language of the
proceedings (see Rule 71(3) EPC in detail). Depending on the applicant's
reaction to this, the legal consequences are determined either under Rule 71(5)
or Rule 71(7) EPC.
Rule
71(5) EPC states:
If the applicant, within the
period laid down in paragraph 3, pays the fees under paragraph 3 and, where
applicable, paragraph 4 and files the translations under paragraph 3, he shall
be deemed to have approved the text communicated to him under paragraph 3 and
verified the bibliographic data.
Corresponding
to this is Rule 71a EPC, which is entitled "Completion of the grant
procedure" and provides in paragraph 1:
The decision to grant the
European patent is taken when all fees have been paid, a translation of the
patent claims into the two official languages off the European Patent Office
other than the language of the proceedings has been filed and the text intended
for grant is approved. The version of the European patent application on which
it is based must be indicated in the decision.
A
remittance to the examining division for grant with precisely identified
documents according to variant 1 does not contradict Article 111 EPC, according
to what has been said above, because after issuing the communication according
to Rule 71(3) EPC - if the requirements mentioned there are fulfilled - a
further decision of the examining division, only mentioned in variant 2, is
taken, namely the decision to grant under Rule 71a(1) EPC. Because, in
terms of content, this decision is not a separate decision of the examining
division, but merely implements the decision of the Board of Appeal (in
principle) identically.
The
alternative to Rule 71(5) EPC (apart from reasoned requests for corrections, not
amendments, under Rule 71(6) EPC [] is Rule 71(7) EPC:
If the fee for grant and
publishing or the claims fees are not paid in due time, or if the translations
are not filed in due time, the European patent application shall be deemed to
be withdrawn.
In
the Board's view, the patent application is also deemed to be withdrawn under
Rule 71(7) EPC if the applicant - without taking the actions required under
Rule 71(3) EPC - within the time limit of Rule 71(3) EPC pursuant to Rule 71(6)
EPC whose non-applicable wording requests reasoned amendments (or sticks to the
last version submitted by him). Such a request must be classified as
inadmissible as Rule 71(6) EPC is not applicable in this regard. Admission to
the procedure would contradict the binding decision-formula in view of the
principle enshrined in Article 111(2) EPC. Since admission is not possible, the
examining division does not have to take a decision under Rule 137(3) EPC,
according to which "Further amendments ...can only be undertaken with the
approval of the examining division". Since approval is excluded from the
outset, the examining division has no opportunity to exercise the discretion
conferred on it by this provision, not even in the sense that it may be held
accountable for an assumed "reduction of discretion to zero ", i.e.,
the only possible and permissible exercise of discretion (see T 700/15, point
48), the admission of amendments (or the last submitted version) refused. Such
a reduction in discretion would only be considered if by several conceivable
decisions, only the refusal of admission to the procedure could be considered.
Due to the finality of the Board of Appeal's decision, however, no decision on
admission to the proceedings based on the examining division's own considerations
can be considered.
In
the contested decision, on the other hand, the examining division examined the
admission under Rule 137 (3) and correctly assumed that the documents specified
in the decision formula could no longer be touched. Therefore, it did not allow
the amended set of claims. It was therefore based on a reduction in discretion
to zero and not on the precedent inadmissibility of the amendments and,
accordingly, also not on the withdrawal fiction of Rule 71 (7) EPC.
As
far as the Board is aware, the above legal opinion has not yet been expressly
expressed in the Boards' case law. Therefore, the appellant can be given
the legitimate expectation that the fiction of withdrawal will not apply if
amendments are filed within the time limit under Rule 71(3) EPC and that the
amendments requested will be examined for admission.
As
a result, the application continues to exist and, according to the decision
under appeal, the request is not to be regarded as admitted to the procedure
under Rule 137(3) EPC.
3.6 Submission of a question to the Enlarged Board of Appeal
The
appellant considers the question of the legal significance of a decision by a
board of appeal remitting the patent to the examining division for grant in a
specific version to be of fundamental importance. She therefore suggested
during the oral proceedings that the Board should refer this question to the
Enlarged Board of Appeal if it considered it appropriate. In the statement
following the hearing (item 9, page 9), she said that a question referred
could, for example, be as follows:
Does a decision of a Board of
Appeal remitting a patent application to the Examining Division for grant in a
specifically specified version mean that this version can no longer be amended
in the proceedings before the EPO, even at the applicant's request [Question
1], or after such a remittance, is the examining division entitled to decide on
reasoned amendments or corrections filed by the applicant under Rule 71(6) EPC
[Question 2]?
From
the point of view of the adjudicating Board of Appeal, it is not necessary for
the Enlarged Board of Appeal to deal with this question within the meaning of
Article 112(1)(a) EPC - and therefore not "appropriate". As explained
in detail above, the answers to Questions 1 and 2 here referred to clearly
result from the EPC (cf. case law of the Boards of Appeal of the EPO, 9th
edition 2019, V.B.2.3.7), in particular Article 111. The suggestion in
appellant's request to submit the question if the Board deemed it appropriate is
not followed. The answers are summarized as follows:
Question
1: Yes, a decision by a board of appeal remitting a patent application to the
examining division for grant in a specifically defined version means that this
version can no longer be amended in the proceedings before the EPO, even at the
applicant's request. This follows - as discussed above - from the legal concept
of Article 111(2) EPC. According to this provision, a decision on individual
questions - with the same facts - has a binding effect. It follows that a grant
decision with well-defined documents is fully binding. In the case of such a
decision, the board's power to remit for grant also derives from the legal
concept of Article 111(2) EPC. If, under this provision, remittal for further consideration
is possible, then it must be possible to refer back to the mere grant after the
necessary administrative measures have been taken.
Question
2: After such a remittance, is the examining division entitled to decide on
reasoned amendments or corrections filed by the applicant under Rule 71(6)
EPC. The answer is: no. This follows from the affirmative answer to
question 1.
3.7 Necessity to file a divisional application ("interests" of
the appellant)
The
reference to the appellant's interests is irrelevant to the present
proceedings. This applies to the need, which she communicated as felt during
the oral proceedings before the board, to have to file a divisional application
with considerable costs if the present main request is rejected. This is because
the parent application and the divisional application are independent
applications which are legally linked to one another only via Article 76 EPC.
Economic links of the type claimed are legally irrelevant.
Regarding
the disadvantages alleged in the statement of grounds of appeal (under No. 6)
for the applicant and also for the public in the event of the grant of a patent
with a wording that is at least potentially problematic in terms of clarity and
validity, the only thing to be said is: These are the possible consequences of
a final decision of the Board of Appeal.
4. Result regarding the main request
After
all, based on Variant 1, a decision was made specifying all documents for the
grant of a patent and the matter was referred back for implementation. The
content of the decision is binding (acquires substantive res judicata), which
follows from the legal principle enshrined in Article 111(2) EPC. It is
therefore binding on the examining division, which cannot take a different
decision (apart from corrections (correction of errors) under Rule 71(6) EPC,
which was not invoked in the present case). It can also be concluded from
Article 111(2) EPC that the board remanded the matter which it had decided
under variant 1 solely for grant on the basis of the binding decision formula.
This
prevented the examining division from granting a patent with documents other
than those specified in the decision formula. The grant was conditional on the
applicant fulfilling the formal requirements. These include paying the fee for
grant and publication and filing a translation of the claims (Rule 71(3),
second sentence, EPC). The appellant failed to do so and instead filed an
amended request under Rule 71(6).
As
a result, the examining division rightly did not admit the amended request to
the procedure, as it considered that, because of the binding decision-formula,
it had no discretion under Rule 137(3) EPC to carry out the procedure
prescribed by Rule 71(6) EPC , i.e. the issuance of a new communication under
Rule 71(3) or the resumption of the examination proceedings (ie assumed a
"reduction of discretion to zero"). However, since Rule 71(6) EPC is
not applicable in the present case, it should have rejected the request as
inadmissible from the outset because the acts specified in Rule 71(3) EPC had
not been carried out. The legal consequence of Rule 71(7) EPC, i.e. the fiction
of withdrawal, did not, in the board's view, because of the appellant's
reliance on the possibility of reviewing a refusal of admission under Rule
71(6) EPC.
As
a consequence of the above assessment, the comments on the question of the
patentability of the subject-matter of the new claims under No. 5 of the
statement of grounds of appeal are irrelevant.
Auxiliary request: Version of the Druckexemplar
[quote from summons]
5. [6.] The auxiliary request
concerns the grant of a patent in the version of the printed copy, i.e. the
grant documents that were sent to the appellant with the communication under
Rule 71(3) EPC of 03.11.2017. The appellant considers that its approval of
the version in which the examining division "intends" to grant the
patent means that there is no basis for the rejection decision. It should
be revoked and the application for grant in the version of the printed copy
"rejected".
The Board notes that under Article
12(4) RPBA 2007 it has the power, among other things, not to admit requests
that have already been made in the first instance proceedings - in this case,
in response to the communication from the examining division pursuant to Rule
71(3) EPC of November 3, 2017 could have been put forward (cf. on earlier law
the decision in case T 79/89 of 9 July 1990, OJ EPO 1992, 283, point 5).
[End of the quote from the
summons.]
The
Board does not make use of this power in the present case and considers the
auxiliary request. The appellant drew attention to legal aspects that have
not been dealt with, or not dealt with comprehensively, in previous case law.
She
was therefore entitled to use her actions to bring about the treatment and
decision on these legal issues. It did not have to assume that the fiction
of withdrawal under Rule 71(7) EPC applied (see above, No. 3.5 at the end).
Since
the present auxiliary request is identical to the only request on which the
board's decision in favor of T 1891/12 of 10 July 2017 was based, and the
decision under appeal cannot stand, the present decision has the decision
formula which identical to that of the latter decision. The contested
decision is therefore to be set aside and the matter remitted to the department
of first instance for the grant of a patent in accordance with the
decision-formula of decision T 1891/12 of 10 July 2017.
Request for reimbursement
6.
This request pursuant to Rule 103(1)(a) EPC is to be rejected simply because
the appeal in the main request, the sole reason for which an appeal was filed,
was unsuccessful. Incidentally, this result also follows from the
following considerations of the Board in the summons:
5. Finally, the request for
reimbursement of the appeal fee due to a serious procedural error is manifestly
unfounded. Because the non-use of discretion by the examining division, in
which the appellant sees a serious procedural error, was - as already explained
- appropriate due to a lack of discretion. The examining division
correctly recognized that the decision formula means that the documents, i.e.
description, claims, drawings, are res judicata and can no longer be
touched. ...
The
fact that the examining division assumed a reduction in discretion to zero in
the context of an admission decision under Rule 137(3) EPC, and not that the
justified amendments were inadmissible, is in the present case - as explained
(above, point 3.5 at the end) - harmless. To the Board's knowledge, its
legal opinion has not yet been expressly expressed in the case law of the
Boards. The question of whether the assumption of a reduction in discretionary
power to zero could actually be an independent procedural error or whether
there might be a material error (see above, No. XIII) can remain open.
For these reasons it is decided:
1.
The contested decision is set aside.
2.
The matter is remitted to the department of first instance with an order to
grant a patent with the following wording:
Claims
No.
1 - 12 according to the main request (from 14:40), filed in the oral hearing on
July 10, 2017,
Description:
Pages
1 - 11 of the clean copy, filed in the oral hearing on July 10, 2017,
Drawings:
Sheet
1/7 to 7/7 in the original version.
3.
The request for reimbursement of the appeal fee is rejected.
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