The concept of legal capacity before the Boards of Appeal
1. A decisive question in this case is whether, inter alia, the fee for further processing has been paid in time, i.e. by 16 October 2019. As payment has only been received by the EPO on 18 October 2019, the appellant was given the opportunity, by communication of 21 No vember 2019, to provide evidence that the payment had been effected before the deadline in an EPC Contracting State, and to pay a surcharge of EUR 150 within two months (i.e. by 3 February 2020). If so, the fees would be considered to have been paid in due time. This was based on Article 7(3) RFees, according to which the pe riod for payment was considered to be observed if evi dence was provided that the payment had been effected through a banking establishment or if an order to such banking establishment to transfer the amount of the payment had been duly given. According to Article 7(4), first sentence, RFees, the EPO may request the person who made the payment to produce such evidence within a period to be specified; if they fail to comply with this request, the period for payment shall be consi dered not to have been observed.
2. On the face of it, such evidence was provided only on 23 April 2020, thus after the deadline set according to Article 7(4) RFees, with the appellant then submitting a written confirmation by XXX that the payment of fees due on 16 October 2019 had effectively been requested on that day, but had only been sent two days later. This led the Receiving Section to the con clusion that the fee payment for further processing should (finally) be considered as made too late (Ar ticle 7(4), second sentence, RFees), and no valid request for further processing had thus been filed.
3. However, any such conclusion can only be drawn if the communication of 21 November 2019 had been validly notified on the appellant, thus triggering the time limit as set therein, for producing evidence for timely fee payment, pursuant to Article 7(4) RFees. The same goes for the notification of the communication of a loss of rights of 6 August 2019, and for any other no ti fication on the appellant throughout the proceedings.
4. In particular, the valid notification on a natural person as party to the proceedings presupposes their legal capacity (cf. Rule 142(1)(a) EPC; as to the term and the conditions see below). The notification on a legally incapable person who is not properly repre sen ted is null and void, as are other procedural acts involving or regarding them (cf. Articles 467, 468, 473 and 475 French Civil Code (FCC); 170 German Code of Civil Procedure (ZPO), 1(1), 6 Austrian Code of Ci vil Procedure (ZPO); cf. Austrian jurisprudence, see Le gal Information System of the Republic of Austria ,,RIS-Justiz" RS0006948, RS0122203, RS0083724).
The same goes for the notification on a representative being themselves legally incapable (cf. Rule 142(1)(c) EPC).
5. In the event of legal incapacity of an applicant or proprietor, or their representative, proceedings before the EPO are interrupted (see Rule 142(1)(a) and (c) EPC and below). When, in such event, the EPO has been informed of the identity of the person authorised to continue the proceedings, they shall notify such per son that the proceedings will be resumed as from a speci fied date (Rule 142(2) EPC). Likewise, Rule 142(3) EPC foresees resumption of the proceedings in case of legal incapacity of a representative upon appointment of a new representative.
Any time limits, other than those for requesting exami nation and paying renewal fees, in force at the date of interruption of the proceedings shall begin again as from the day on which the proceedings are resumed (Rule 142(4) EPC; T 54/17).
6. Thus, if legal incapacity is invoked when a decision based on such time limit is appealed, the matter must be referred back to the department of first instance for a fresh decision that takes account of the new cir cum stances (J 902/87, OJ 1988, 323).
7. Legal incapacity of a person means that they are suffering from a disturbance of their mind which makes them unable to form the necessary voluntary intention to carry out legal transactions binding upon them, e.g. to make valid contracts (Case Law of the Boards of Appeal, 10th ed. 2022, III.D.4.3; J 900/85, OJ 1985, 159). In the context of the procedural system of the EPC, which does not distinguish between civil and proce dural legal capacity (see below), this also means that they cannot act on their own in proceedings before the EPO.
8. This definition of legal (in-)capacity in the juris prudence of the Boards of Appeal essentially corres ponds to the definition of Part 1 Section 2(1) of the UK Mental Capacity Act 2005 that "a person lacks capa city in relation to a matter if at the material time he is unable to make a decision for himself in relation to the matter because of an impairment of, or a dis tur bance in the functioning of, the mind or brain", and to definitions along the same lines in other EPO Contracting States (e.g. see Article 425 FCC; German BGH - IX ZB 257/05; Legal Information System of the Republic of Austria ,,RIS-Justiz" RS0117395; cf. also 50 ff Germ an ZPO and 1(1) Austrian ZPO further distinguishing between ,,Gesch ftsf higkeit" (civil capacity) and ,,Prozessf higkeit" (procedural capa ci ty)).
9. The Boards' jurisprudence in this context tells the standards regarding (private) natural persons (i.e. based on the relevant national law) apart from those regarding professional representatives (i.e. a uniform standard based on the autonomous law of the EPC, see Case Law III.D.3.2 and III.D.3.4); J 900/85; J 903/87, OJ 1998, 177).
However, there is no stringent reason for making such a distinction, at all, and as to why the principles laid out in J 900/85 for professional representatives should not equally apply to natural persons, i.e. the assess ment be made on the basis of the autonomous law of the EPC (see J 900/85, reasons 10 f: "... there should be a uniform standard of judging legal incapacity, in order to avoid differences in the application of [now Rule 142(1)(c) EPC] depending on the nationality or domicile ... the question of determining the legal incapacity [of a representative] is one for the European Patent Office, applying its own standards, developed in the light of experience and taking into consideration principles applied in the national laws of Contracting States"; cf. also G 1/13, reasons 5.3, and T 15/01, OJ EPO 2006, 153, reasons 9).
The further reasoning in J 900/85, reasons 9, "that the capacity of the applicant or proprietor to carry out legal transactions relating to his application or pa tent must be determined according to a national system of law, since his interest in the application or patent is an interest in property (cf. Articles 74 and 2(2) EPC)" is barely persuasive, and the unspecific "inte rest in property" of a natural person as applicant or proprietor cannot be the decisive criterion for the determination of the law applicable to legal capacity because of mental health issues, and does not speak in favour of the application of (whichever) national law.
To the contrary, only unified standards according to the autonomous law of the EPC can guarantee equal treatment of the parties in proceedings before the EPO, as an essential element of fair trial (see Article 6(1) European Convention on Human Rights (ECHR), and Article 47(2) Char ter of Fundamental Rights of the Euro pean Union (CFR), both recog nised as bin ding standards and general yardsticks for fair proceedings before the Boards, and as expressing fair trial prin ciples of proce dural law gene rally recognised in the EPC Contracting Sta tes; cf. Article 125 EPC and Case Law III.H.3, e.g. J 6/22, reasons 47).
G 1/22 and G 2/22 - as recently handed down, albeit in a different context - reaffirm the general approach of applying the autonomous law of the EPC, being inspired and supplemented by the national laws of the EPC Contracting States, to arrive at uniform standards for all parties before the EPO (cf. reasons 99: "... the autonomous law of the EPC should not establish higher formal requirements than those established under nati onal laws that may be relevant in the context of a European application" and reasons 133 "it cannot be excluded, however, that ... national laws need to be considered as well ... the existence of legal entities ... may be relevant and may need an assessment under national laws".
The autonomous (procedural) law of the EPC is also to be applied for the question of legal capacity of the appel lant as a natural person suffering from mental health issues, and the implications for the proceedings before the EPO. However, national laws might need to be considered, as well, e.g. as to ensuring legal pro tection and legal representation for legally incapable persons in line with their national systems.
10. As outlined above with reference to the jurisprudence of the Boards of Appeal, a legal incapacity of the ap pellant would mean that the "disturbance of ... mind" because of his state of health makes him "unable to form the necessary voluntary intention to carry out legal transactions which will be binding upon him, e.g. to make valid contracts", and thus also unable to act on his own in the present case.
Assessment of legal capacity in the proceedings before the Boards of Appeal
11. Legal (in-)capacity is to be assessed ex officio, at any time during the proceedings (J 902/87; J 49/92; T 854/12; T 1680/13; J 7/16; cf also Articles 117 and 120 French Code of Civil Procedure (FCCP); 56(1) Ger man ZPO, 6(1) Austrian ZPO).
12. Such ex-officio assessment of legal capacity requires a reliable medical opinion (J 900/85; J 7/16; J 7/20) that should address all relevant facts (J 5/99).
13. The ex-officio assessment of the legal capacity of an applicant, proprietor or representative has been dealt with on various occasions by the Boards' jurisprudence.
14. In J 903/87, a case similar to the present, the ap pel lant had provided a medical document that was consi dered insufficient to show their legal incapacity. No further steps were taken ex officio, and the appellant was treated as possessing legal capacity.
15. In J 902/87, the question of legal incapacity had only arisen in the appeal against a decision which had held the time limit for re-establishment of rights not ha ving been met, supported by a medical certificate and sworn statements of witnesses. The case was remitted to the first instance to establish whether there was legal incapacity.
16. In J 49/92, while reiterating the principle of ex-officio assessment of legal capacity, the board conclu ded from the absence of a medical certificate or other documentary evidence, and from the fact that the appellant had managed to transfer fees for the appli cation, that she possessed legal capacity.
17. In T 1680/13, the medical certificate as provided by the appellant in that case was not considered suffi cient to prove his legal incapacity. Moreover, during a personal interrogation by the board at the oral pro ceedings, the appellant had made the impression to be fully aware of what was happening. Absent any mat ters that would have put the legal capacity of the appellant in doubt, he was treated as possessing legal capacity.
18. In J 5/99, a case regarding legal capacity of a profes sional representative, the board's decision was based on a detailed report of a medical expert, together with further medical evidence. In addition, the board made own investigations into the behaviour of the represen tative which confirmed the factual findings that he was no longer legally capable, and that this condition had occurred at a precise moment during the proceedings. In J 2/98, regarding the same representative, though, it was concluded that the medical evidence on file did not prove legal incapacity.
19. In J 7/99, likewise a case regarding legal capacity of a professional representative, a letter of a Consultant Psychiatrist had been provided, which came to the conclusion that the person was suffering from a major depressive disorder, coming with cognitive impairment that affected his ability to concentrate, and his short-term memory and recall, and that it was unlikely that he would have been able to function normally for 4 to 6 months. The board did not consider this sufficient evidence to assume legal incapacity, as it affected only one single case of a missed deadline.
20. In J 7/16, concerning legal capacity of a former pro fessional representative, the board requested his successor to provide a medical certificate, but which could not be obtained. It was underlined that a decla ration of legal capacity of a professional represen tative had serious consequences for their professional life, and thus had to be based on a reliable medical opinion. The medical documents on file could not be regarded as satisfactory evidence of a serious mental illness of the former representative. Further investi gations ex officio were not undertaken.
21. In the present case, there is no need to take a final stand on the requirements, framework and limits of the ex-officio assessment of legal capacity, as set out in the boards' jurisprudence. While this jurisprudence time and again reiterates that a decision on legal capa city has to be based on a reliable medical opinion that should address all relevant facts, it seems that the boards on occasion either considered the evidence already on file sufficient or insufficient to draw an immediate conclusion on legal incapacity, or requested evidence only from the party or professional represen tative affected. There is apparently no case where an in-depth medical assessment has been under taken ex officio by a board, neither by appointing a medical expert nor by referring the case to national authori ties for such assessment, or in any other way. Like wise, there is apparently no case where represen tation in the proceedings before the EPO of a natural person lacking legal capacity was ensured by the appointment of a representative, in one or another way.
22. There is a general presumption in favour of legal capa city of a natural person appearing as party or repre sen tative before the EPO, in line with generally recognised principles of procedural law in the Contrac ting States of the EPO (see Part 1, Section 1(2), of the Mental Capacity Act 2005; see also Equal Treatment Bench Book 147). However, this presumption no longer holds if there are indications to the contrary, in parti cular from this person's conduct in the procee dings.
23. In such a case, a person cannot be simply further treated as legally capable, despite indications to the contrary, by putting the burden (only) on them to provide evidence to prove their own legal incapacity. If they were indeed legally incapable, they might not have been able to understand what the proceedings, and the request to provide evidence, were about, and the conse quences of their action or non-action.
24. In addition, depending on the individual case, it may be questionable to finally conclude upon legal capa city, in the absence of further evidence, where only medical experts might be in a position to so do, e.g. based on isolated behaviour at oral proceedings (cf. Equal Treatment Bench Book, February 2021 ed., April 2023 revision, Judicial College, p 150, "judges should be slow to form a view as to capacity without the bene fit of any external expertise, because of the serious ness of the consequences for the person", with refe rence to Baker Tilly v Makar [2013] EWHC 759 (QB); cf also BGH - VI ZR 283/21 as to undue assumption of medi cal expertise).
Assessment of the appellant's legal capacity in the present case
25. In the present case, the appellant himself ... to support the request for interruption of the proceedings - had put his health issues on the table, together with me di cal documentation: the medical certificates of 3 April 2020, of 26 October 2020, and of 13 September 2021, all from the N.N. Medical Centre. Already according to them, the appellant suffered from a number of medical conditions, specifically recurrent depres sion, PTSD and dissociative seizures, and he had a tendency to experience several months long episodes where he was in a major depressive state, leaving him often unable to leave bed; his mental state had been severely affected during these episodes and his ability to make decisions, weigh up consequences and prioritise daily tasks was significantly impacted. These certifi cates also describe a particular episode that might have co in cided with the time of the notifications in question, namely late 2019 into early 2020.
26. In the first instance, before the Receiving Section and the Legal Division, no decision was taken on the re quest for interruption of the proceedings, and the ap pel lant continued to be treated as legally capable, af ter he had been asked to prove his own legal capacity and after the medical evidence on file had been found in suf ficient to this end. The appellant's health prob lems were acknowledged in the appealed decision, but were not considered decisive in any way. There were no further ex-officio investigations into his state of health.
27. However, as outlined above, and while recognising that the EPO has limited procedural means for ex-officio in vestigations into a natural person's state of health, unlike a national court or administrative authority, it cannot be made exclusively dependent on this person to prove their own legal incapacity, as such approach would exactly presuppose their capacity to understand what was at stake, in particular the ability to re ceive, understand and respond to communications, and thus legal capacity to participate as party to the pro cee dings on their own.
28. Given the circumstances of the case and the evidence already on file at first instance, the appellant's legal capacity could no longer simply be presumed without further investigation and, in the absence of further medical evidence to the contrary, he could no longer be treated like any other party presumed to be able to act validly in the proceedings on their own, and without proper representation.
29. Against this backdrop, the board made several attempts to investigate ex officio into the appellant's state of health, also with a view to explore possible options for protective measures in favour of the appellant, and his representation in the proceedings if he were indeed found legally incapable (to the latter issue, see below).
30. As the appellant is domiciled in London, the board ap proached the Court of Protection, in particular, which has a main office in London and regional hubs and is responsible for a range of decisions in financial and welfare matters for people in England and Wales who lack mental capacity.
Pursuant to Article 5(1) of the Convention of 13 January 2000 on the International Protection of Adults (cf. also Article 5 of the Proposal for a Regulation on jurisdiction, applicable law, recognition and enforce ment of measures and cooperation in matters rela ting to the protection of adults, 2023/0169 (COD)), the court with jurisdiction to take measures for the pro tection of the person or property of an adult is generally de ter mined by their habitual residence. Although this Convention formally applies only to Scotland within the United Kingdom of Great Britain and Northern Ireland (the UK), it has been given effect also in England and Wales (see Part 3, Section 63, of the Mental Capacity Act 2005).
31. Reaching out to the Court of Protection, and the Office of the Public Guardian (an administrative and super visory body to the Court of Protection, see Part 2, Section 57, of the Mental Capacity Act 2005), did not return any responses.
32. With the board's communication of 11 July 2023, the appellant was, inter alia, invited and encouraged to have a further medical assessment made, and to provide additional documents. Preparations were also made for an ex-officio medical assessment in case these efforts did not bear fruition.
33. In response, the appellant submitted further documents: A further medical certificate of the N.N. Me di cal Centre, of 12 September 2023, and the statement of the appellant's former counsellor.
34. These further documents, atop the medical documentation already on file, and in the light of the appellant's be haviour and submissions in the proceedings, finally provide sufficient evidence to conclude that the appel lant did not possess legal capacity during a substan tial part of the proceedings, and that this problem per sists to date. In view thereof, further investi ga tions into the appellant's state of health, or even an ex-officio medical examination, could be dispensed with, at least for the time being.
35. In particular, it can be assumed that the appellant entered into a state of legal incapacity when the Re ceiving Section undertook to notify him of their communication of 21 November 2019 (concerning the provision of evidence that fee payment for the valid fi ling of the request for further processing was made in time, namely on 16 October 2019, and setting a two-month time limit for providing such evidence).
36. Several reminders to the appellant of this communi cation and the deadline set in it by the Formality Officer in late 2019 and early 2020 were unsuccessful, with the appellant himself stating that he was unaware that he had received such a communication, only to later state that he had "found" it. The appellant's con fusion about the notification of the communication and its later reappearance was further underlined by a postal investigation, which revealed a receipt for the communication dated 25 November 2019, signed by him, and the intense correspondence with him about the im pact of the procedural steps taken by the first instance.
The appellant himself explicitly and repeatedly pointed out that he was "battling with 3 different health con ditions" which had left him incapacitated, sometimes for several days, in particular during an "episode" from late 2019 to early 2020.
The medical evidence on file, in line with the appel lant's conduct, confirm this picture: The (first) medical certificate of the N.N. Medical Centre of 3 April 2020, containing the diagnose of recurrent depression, PTSD and disassociated seizures; the letter of the City of Westminster of 13 November 2020, iden tifying the appellant as a potentially vulnerable resident; the second certificate of the N.N. Medical Centre of 26 October 2020 confirming the fin dings of the first, adding that his condition might have had an impact on his ability to timely respond "to a recent EPO application"; the appellant's detailed submission of 1 April 2021; and the third certificate of the N.N. Medical Centre of 13 September 2021, specifically confirming an "episode ... during the time he had been required to respond to the EPO to pay the penalty fee", arguably referring to the fees addressed in the communication of 21 November 2019 (this is also in line with the appellant's submissions in the grounds of appeal, not the least also referring to a "penalty").
The (fourth) certificate of the N.N. Medical Centre of 12 September 2023 further underlines that in periods of depression the appellant would effectively switch off from the outside world for many months and iso late, cutting himself off from all forms of commu nication, and that this could be further compounded if he additionally entered a dissociative state, making him lack the capacity at that time to respond as nee ded, as it was then very difficult for him to take in new information, weigh up the importance of such infor mation and proceed with an appropriate response in a timely and adequate manner. Such episode occurred, in particular ,,at the time of the missed deadlines for payment in 2019".
37. Prior to the notification of the communication of 21 No vember 2019, the appellant's behaviour did not show any peculiarities to draw the conclusion that legal incapacity occurred even earlier, apart from him not having filed a request for examination under Rule 159(1)(f) EPC, in conjunction with Art. 22(3) PCT, within 31 months of the priority date (i.e. by 23 July 2019). Notably, after having received the communication of a loss of rights of 6 August 2019, he apparently cor rectly calculated that he had to react thereto, inter alia, by requesting entry into the European phase by 16 October 2019, and fee payment by the same date. Such request was then made exactly on this last day of the deadline, and he further managed to make the necessary fee payments by the same date (see below).
Annulment of proceedings from the date of the appellant's entry into a state of legal incapacity
38. Procedural acts involving or performed by a person lacking legal capacity, without representation or (later) approval by a properly appointed represen tative, are null and void. Thus, the appellant as a person who no longer possesses legal capacity, could not and cannot validly act on his own in the procee dings before the EPO, neither at first nor second in stance (see below on how to ensure his proper represen tation in the continued proceedings).
39. In particular, as outlined above, the notification of the Receiving Section's communication of 21 November 2019 is null and void, since the appellant was in a state of legal incapacity at that time, and is there fore without effect. The same applies to the entire sub sequent proceedings, i.e. the procedural steps taken by the departments of first instance and the appellant since then. This includes, in particular, the contested decision and its notification.
40. These proceedings are thus (to be declared) null and void, with the consequence that the impugned decision is deemed to have never become legally effective.
Interruption of the proceedings from the date of the appellant's entry into a state of legal incapacity
41. Moreover, as outlined above, proceedings before the EPO are to be interrupted in the event of legal incapacity of an applicant or proprietor, and are to be resumed with the person authorised to continue (see Rule 142(1)(a) and (2) EPC; cf. Articles 370 and 374 FCCP, 241 German ZPO, 6a, 190 Austrian ZPO, 5 Austrian Non-Contentious Proceedings Act (Au StrG)).
The dates of interruption and resumption of proceedings are to be entered in the European Patent Register (Rule 143(1)(t) EPC).
42. Interruption occurs ex lege when the conditions for it are met, which must be examined ex officio. The decision on, and the registration of such interruption is only declaratory (e.g. see T 854/12 with further re fe rences to the Boards' jurisprudence, and T 54/17).
43. The appellant explicitly requested such declaratory de ci sion on interruption during the first-instance pro cee dings. However, no decision was taken.
44. Based on the above findings on legal incapacity, and in line with the declaration of the proceedings as null and void, the proceedings are (to be) interrupted, from the same moment in time (e.g. see J 5/99): From the ap pellant's entry into a state of legal incapacity, thus from, and including, the notification of the commu ni cation of 21 November 2019.
45. The declaratory decision on interruption is to be taken by the board, and there is no room to involve the Legal Division at this stage (see Case Law III.D.4.1, and T 854/12 with a substantial number of further refe rences; Keussen in Benkard EP 4th ed. 2023, Article 110 Rn. 141 f).
46. In particular, in T 854/12 (reasons 1.2), the juris prudence of the boards was analysed in detail, also taking into account a submission of the President of the EPO of 9 September 2015, on the question of whether it was for a board to interrupt (and resume), pursuant to Rule 142 EPC, proceedings pending before them or whether it was the (exclusive) competence of the Legal Division to do so. Reference was made in T 854/12 to jurisprudence of the Legal Board and Technical Boards, according to which the boards had always decided on interruption themselves (reasons 1.2.1). It was further held that on a number of other occasions, the boards had used the alternative option of leaving such deci sions to the Legal Division. While being responsible and competent for decisions concerning entries in the European Patent Register under Article 20(1) EPC, the Legal Division had held the view that they were also responsible and competent for the decision to be registered itself, hence the question of whether there was an interruption and when it might end (reasons 1.2.2). Reference was also made in T 854/12 to juris prudence where the boards had denied any further competence of the Legal Division in such cases (reasons 1.2.3). The competence of the boards under Ar ticle 21(1) EPC for appeal proceedings, including decisions on the merits and ancillary procedural mat ters, was not affected by the competence of the Legal Division for decisions as to entries in the European Patent Register under Art. 20 EPC. The Deci sion of the President of the EPO concerning the res ponsibilities of the Legal Division of 21 November 2013, OJ 2013, 600, did not transfer any powers and competences from the Boards of Appeal to the Legal Division on the basis of Rule 11 EPC ("allocation of duties to the departments of first instance"), but only concerned the allocation of functions between these first-instance departments. Nor was a board's compe tence affected by provisions such as Rule 142 EPC, which required certain elements of the proceedings to be entered into the Register in order to inform the public, including during appeal pro ceedings (reasons 1.2.4). The same was true of other decisions concerning entries in the Register, in particular as to the party status of the applicant or proprietor. There was no binding effect of the entries in the Register (reasons 1.2.5). In the absence of such binding effect, there was no point in giving priority to decisions of the Legal Division concerning inter ruption of the proceedings, with the possibility of a subsequent appeal to the Legal Board. Giving priority to decisions of the Legal Division could thus not - contrary to what had been advocated by the President of the EPO - ensure a uniform decision in all cases pending at first or second instance which might be affected by the same possible ground for interruption (reasons 1.2.6). Nor was there any compelling legal principle that decisions on procedural issues should al ways be subject to an appeal before the boards (reasons 1.2.7). The power and competence of a board to direct proceedings before them included the competence to decide whether or not the conditions for inter ruption were met (reasons 1.2.8). Extensive reference was finally also made in T 854/12 to legal literature being in favour of an exclusive competence of the boards to declare interruption of proceedings (reasons 1.2.10).
47. These conclusions of T 854/12, and its reasoning, are still fully valid, and have not been put in doubt by sub sequent jurisprudence. T 54/17 (reasons 1.3 f) ex pli citly endorsed T 854/12, regarding the generic competence of the boards to decide on interruption, and that the Legal Division had thus, insofar, no exclusive competence, while leaving open if there was a remai ning, competing or parallel, competence of the Legal Division at all.
48. In J 9/21 (reasons 1.3 to 1.7), unlike the present case, appeal proceedings before a Technical Board where pending, upon the appeal against the final decision of the Opposition Division to revoke the patent. However, during the opposition period, the proprietor - a com pany under Australian law - had already been put under external administration by the Australian authorities. The Legal Division then, having become aware thereof, in ter rupted the opposition proceedings as from their outset. This decision, taken while the appeal pro ceedings before the Technical Board where pending, was then appealed before the Legal Board.
Upon making further references to J 10/19 (reasons 6) and T 1389/18 (reasons 4 f), the Legal Board in J 9/21 concluded that an applicant or proprietor might be involved in a multitude of proceedings before the EPO were the question of legal status might pose, to be determined on a set of facts being usually identical in all proceedings affected. The EPOrg as an international organisation governed by the rule of law required pre dictability of jurisdiction and a certain degree of uniformity in the application of the law. Although it might not always be possible to achieve that, due to a lack of binding effect (with reference to T 854/12, reasons 1.2.6, underlining that there it had only been concluded that the Legal Division's power in that regard was not exclusive), the EPO should endeavour to avoid conflicting decisions on interruption of pro ceedings concerning the same applicant or proprietor in multiple proceedings. In view thereof, and to avoid that the Technical Board in the parallel proceedings might come to a different conclusion on interruption, the Legal Board concluded that the Legal Division had had the power to determine interruption of the procee dings. Lastly, they agreed with the Legal Division that the conditions for interruption in that case were fulfilled.
49. The case of J 9/21 differs from the one present at least in that a decision on interruption had indeed been taken by the Legal Division, while parallel appeal proceedings before a Technical Board were pending, and the decision on interruption was then appealed before the Legal Board. In such situation, it was concluded that there should only be one board (the Legal Board) to rule on the legal status of the proprietor and thus on interruption. The Technical Board in the parallel appeal proceedings had been, moreover, aware of the pro ceedings before the Legal Board. As a consequence, under those specific circumstances the risk of conflic ting board decisions was considered best countered by the Legal Board in J 9/21 effectively ruling on interruption themselves.
50. T 1389/18 (reasons 4 f), also referred to in J 9/21, concerned a case where the decision of the Opposition Division to uphold the patent in amended form had been announced in oral proceedings, while insolvency procee dings regarding the proprietors had already been opened, and the Legal Division thereafter interrupted the proceedings "retroactively". The Opposition Divi sion's decision was then appealed before a Technical Board. Under the specific circumstances of the case, the Technical Board in T 1389/18 concluded that the decision on interruption had been validly handed down prior to the opening of the appeal proceedings, and that the Legal Division was, in principle, competent for any such decision.
The proprietor in the case underlying T 1389/18 had then requested the reversal of the decision on inter ruption, which was rejected by the Legal Division. This decision of the Legal Division was then appealed before the Legal Board in J 10/19, where (reasons 6) the result of T 1389/18, i.e. the Legal Division being competent under the specific circumstances of the case, was confirmed.
51. As also referred to in T 854/12, already early on in the EPO's history the Legal Division had been entrus ted, by Decision(s) of the President(s) of the EPO, with reference to Article 20 and Rule 9(2)/Rule 11(2) EPC, inter alia, with "(b) Interruption and resumption of proceedings (Rule 142 EPC)" (see Decisions of the Pre sident of the European Patent Office concerning the responsibilities of the Legal Division of 10 March 1989, OJ 1989, 177, and of 21 November 2013, OJ 2013, 600; the latter was also published in OJ 2014, 109, OJ 2015, 113, OJ 2016, 112, OJ 2016, 286, OJ 2017, 113, OJ 2018, 112, OJ 2019, 105, OJ 2020, 121, OJ 2021, 126, OJ 2022, 128, OJ 2023, 132).
52. Article 20 EPC is, indeed, the only EPC provision that directly deals with the Legal Division's competences, namely as to decisions in respect of entries in the Euro pean Patent Register and in the list of professional representatives. According to Article 127(1) and Rule 143(1) EPC, the European Patent Register shall contain, inter alia, entries on (t) dates of interruption and resumption of proceedings in the case referred to in Rule 142 EPC.
Article 20 EPC does not go beyond the competence for registering the dates of (decisions of) interruption or resumption of the proceedings, and it does not further comprise the competence for decisions to interrupt or resume proceedings, as has traditionally been assumed by the decisions of the Presidents of the EPO as out lined above. However, such competence can neither be de rived from any of the provisions cited above.
From the mere fact that the Legal Division is responsible for entries in the European Patent Register, with the dates of interruption or resumption of proceedings pursuant to Rule 142 EPC being among the entries to be made in the register (see again Rule 143(1)(t) EPC), it cannot be derived that the Legal Division would also be responsible for the deci sion to interrupt themselves.
In addition, the list of entries in the register in Rule 143(1) EPC further contains, inter alia, (n) the date on which the application is refused, withdrawn or deemed to be withdrawn, (r) the date and purport of the deci sion on opposition, (u) the date of re-establish ment of rights where an entry has been made under sub-paragraphs (n) or (r), (x) the date and purport of the decision on the request for limitation or revocation of the European patent, and (y) the date and purport of the decision of the Enlarged Board of Appeal on the petition for review.
In all these cases alike, the underlying decision is clearly not to be taken by the Legal Division.
53. Lastly, in a consistent and coherent legal system, competing competences are to be avoided, at least, even if they concern decisions of a mere declaratory nature like on interruption. Neither the approach of "igno ring" Legal Division decisions while appeal proceedings are pending, nor "accepting" them, is in line with the legal system of the EPC, in particular as a continued first-instance competence of the Legal Division would need a particular legal basis for offsetting the devo lutive effect of an appeal that comes with the exclusive competence of the boards, according to Article 21(1) EPC, until the appeal proceedings are terminated.
The mere allocation of tasks among the first-instance departments by a decision of the President under Rule 11(2) EPC presupposes the competence of the first instance, irrespective of which department is to exer cise it, and thus cannot in itself establish a conti nuing first-instance competence with regard to inter ruption where the boards have exclusive, and unlimited, competence under Article 21(1) EPC (Keussen in Benkard EP 4**(th) ed. 2023, Article 110 Rn. 141 f, referring to the separation of powers in the EPOrg).
54. Against this background, the conclusions in T 854/12 are fully shared by the board, and they are also in line with the legal literature cited therein, which ad vocates an exclusive competence of the board during appeal proceedings (see again, in particular, Keussen in Benkard EP 4th ed. 2023, Article 110 Rn. 141 f; see also Meinders/Lanz/Weiss, Overview of the appeal proceedings according to the EPC, 3rd ed. 2020, 16.8.1 fn. 228; Moser in M nchner Kommentar, 20th supplement 1997, Article 110 Rn. 69, fn. 91; with a different view, without further justification, Haugg in Singer/Stauder/Luginb hl, EP , 9th ed. 2023, Article 20 Rn 16).
This includes, in particular, the observation that there is no binding effect of interruption entries in the Register, which also applies to decisions by the Legal Division or the Legal Board on interruption. Thus, even if de lege ferenda exclusive competence to decide on interruption were to be conferred on the Legal Division, thus effectively giving such decisions "priority", with the possibility of a subsequent appeal to the Legal Board, a unified decision could not be en sured in all pending cases which might be affected by the same possible ground for interruption. Their (final) decision would still not be binding on the Technical Boards.
55. Rather, as a matter of procedural principle, each board, as the deciding body, can and must - ex officio - examine the legal status of the parties in the appeal cases pending before them, i.e. the question of legal capacity, and consequently also decide on the inter ruption of the proceedings in the case of legal incapa city. There is no room for any further involvement of the Legal Division on interruption at the appeal stage.
Remittal to the first instance and continued/renewed proceedings
56. Before finally turning to the question of the appel lant's representation, as regards the consequences of the proceedings being declared null and void, and the remittal to the first instance:
57. When proceedings are declared null and void (and interrupted) by a board, because of legal incapacity of an appellant, the case is to be remitted to the first instance, for the first-instance proceedings to be resumed and continued/renewed with a representative to (appoint and) act on the appellant's behalf, and with further notifications also to make on that repre sentative (see below).
58. As to the background of the communication of 21 November 2019, and the consequences of its notification being null and void, it is recalled that the Receiving Section on 6 August 2019 communicated a loss of rights to the appellant, as he had not filed, inter alia, a request for examination under Rule 159(1) EPC. In the communication of a loss of rights he has been informed that a request for further processing could be made by paying the respective fees, and by completing the omitted acts, within two months (i.e. by 16 October 2019).
As the fees were received by the EPO only on 18 October 2019, he was invited, according to Article 7(4) RFees, with the communication of 21 November 2019 to provide evidence that the payment had been effected before the 16 October 2019 deadline, likewise within two months (i.e. by 3 February 2020). Such evidence was indeed provided, if only on 23 April 2020, by a written confirmation of XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, and that it had been sent only two days later, i.e. on 18 October 2019 (notably because of initial doubts on the bank's side that such payment has indeed been the appellant's intention).
59. In view of XXX's confirmation, it can be con cluded that the payment of the fees for further pro cessing was made, and that the omitted acts were also completed, in due time. There is no harm in the fact that this confirmation was only submitted on 23 April 2020, outside the two-month deadline set out in the communication of 21 November 2019, since the notifi cation of that communication being null and void could not have triggered such deadline.
60. Consequently, the request for further processing was validly made and further processing will have to be granted in the continued proceedings before the first instance. The legal consequences of Article 121(3) EPC will then apply and the proceedings at first instance will have to be further continued by dealing with the appellant's requests for entry into the European phase and for examination by the EPO as designated Office, which were validly filed on 16 November 2019, together with the request for further processing.
61. Upon notification of the appointment of a represen tative by a national authority, or upon appointment of a representative by the EPO, the proceedings will then have to be resumed and continued/renewed in the fashion described (cf. Rule 142(2) EPC; again see below).
Representation of the appellant in the continued proceedings
62. The UN Convention on the Rights of Persons with Disabi lities, having been ratified by the Contracting States of the EPC, and the EPOrg Extension and Validation States, provides:
"Article 1
Purpose
The purpose of the present Convention is to promote, protect and ensure the full and equal enjoyment of all human rights and fundamental freedoms by all persons with disabi lities, and to promote respect for their inherent dignity.
Persons with disabilities include those who have long-term physical, mental, intellectual or sensory impairments which in inter action with various barriers may hinder their full and effective participation in society on an equal basis with others.
Article 13
Access to justice
1. States Parties shall ensure effective access to justice for persons with disabilities on an equal basis with others, including through the provision of procedural and age-appro priate accommodations, in order to facilitate their effective role as direct and indirect participants, including as wit nesses, in all legal proceedings, including at investigative and other preliminary stages.
..."
63. Accordingly, national legal systems sport a variety of safeguards that persons protected by the Convention can enjoy equal access to justice. Notably, there are various mechanisms to ensure that persons lacking legal capacity can participate in legal proceedings through the appointment of (legal) representatives.
64. By way of example, under Austrian law ( 4, 6, 6a, 7 ZPO, 5, 17 Non-Contentious Proceedings Act (Au StrG), 271 Austrian Civil Code (ABGB)) a party's lack of legal capacity has to be taken into account ex officio at every stage of the (civil) proceedings, in particular also before the court of second or third instance (RIS-Justiz RS0035456, RS0035270 T3, T7). The proceedings must be interrupted as soon as doubts arise as to the full mental capacity of a party to the pro cee dings (RIS-Justiz RS0037720, RS0035234), with the consequence that all time limits are likewise inter rupted. The court then notifies the local Guardianship Court at the person's place of residence ("Pfleg schafts gericht") of the circumstances, which then decides - after a full medical examination - whether a legal representative (guardian) needs to be appointed to ensure the party's future representation in court (RIS-Justiz RS0035270). On this basis, it is formally up to the court themselves to assess whether the party lacked legal capacity in their proceedings (RIS-Justiz RS0037720, RS0035228, RS0110082)), if they regularly also take the medical evidence collected by the Guar dianship Court into account. Depending on the outcome of this assessment, the proceedings will be resumed and continued with a guardian, if appointed by the Guardianship Court. The guardian will be served with previous notifications from the court and time limits start to run again from the date of notification. In addition, the guardian is regularly requested to ap prove (all) procedural acts of the party who was found to be incapable in the previous proceedings, if they deem it appropriate, within a specified period (RIS-Justiz RS0107438). In the event of disapproval, or if there is no room for approval, the proceedings are declared null and void from the moment in time when legal incapacity arose (RIS-Justiz RS0110082), and are continued at that stage or even restarted with the guardian as representative, when legal incapacity already arose at the outset of or affected the whole proceedings.
65. A similar system exists in Germany, where the local Guardianship Court at the person's place of residence ("Betreuungsgericht") plays a role similar to that of the Austrian Guardianship Court, appointing a legal or other representative ex officio where necessary, follo wing similar procedures (see 51(1), 56, 57, 170a, 241 German ZPO, 1814 ff German Civil Code (BGB).
66. In France, a party's lack of legal capacity is a substantial ground for invalidity of procedural acts, which the court may raise of its own motion (Article 120 FCCP). Only the person affected, their parents and close relatives and the Public Prosecutor may request the guardianship judge to implement a protective measure (Article 430 FCC). Consequently, the court that has ex officio raised the lack of legal capacity of one party to the proceedings may inform the Public Pro secutor. The request to the guardianship judge must include a medical certificate stating that the person is unable to look after their own interests due to medically certified impairment of either mental or physical faculties such as to prevent them from expressing their wishes (Articles 425 and 431 FCC). Depending on the degree to which the person's legal capacity has been impaired, different protection schemes may be put in place, under which the person is either assisted or represented in participating in legal proceedings (Article 440 FCC). Consequently, the proceedings, which are interrupted by notification to the parties of the legal incapacity of one of them (Article 370 FCCP), can only be validly resumed as they stand if the person deprived of their legal capacity is assisted or represented (Articles 468 and 475 FCC). The guardian must be served with all procedural acts (summons, parties' submissions), otherwise the procee dings will be null and void. The interruption of the proceedings due to the lack of legal capacity has the effect of interrupting the time limits for carrying out the procedural acts. Those time limits run again, and for the remaining time, from the resumption of the proceedings which takes place after the appointment of the person who assists or represents the party deprived of legal capacity.
67. The appellant is in fact habitually resident in London. The system for dealing with legal incapacity in England and Wales revolves around the Court of Protection, based on the Mental Capacity Act 2005, which can, inter alia, appoint a "deputy" (for property and financial affairs or for personal welfare) to make decisions on behalf of a person who has lost legal capacity ("pro tected party"), and to also represent them as their "litigation friend" in any proceedings to which the deputy's power extends (Civil Procedure Rules (CPR) Part 21, in particular Rule 21.4(2) CPR). A protected party must have a litigation friend to conduct procee dings on their behalf (Rules 21.2(1) and 21.3(3) and (4) CPR).
68. At the heart of the system is an application for the appointment of a litigation friend to conduct pro ceedings on behalf of the protected person, made by the protected person themselves, their guardian, their solicitor or a person nominated in a court order. Such an application to the court requires, inter alia, a completed professional assessment of mental capacity form from a general practitioner or other professional.
However, this system does not appear to provide for an easily accessible procedure for the appointment of a representative at the request of other persons or institutions, or even authorities such as the EPO, without specific permission from the court (see Part 2, Section 50, of the Mental Capacity Act 2005), which would then also include an ex-officio assessment of the appellant's state of health by a medical expert.
69. The appointment of a deputy as the appellant's liti gation friend/legal representative in accordance with the national procedures of the Court of Protection and with a view to representing him in the present proceedings before the EPO would have been the preferred option under the EPC (cf. Rule 142(1)(a) EPC "... or the person authorised by national law to act on [their] behalf").
70. However, the board's efforts in this regard have been successful only to the extent that the appellant himself may (will) apply to the Court of Protection for the appointment of a representative. If such a deputy is appointed at a later date, they may also be able to represent the appellant in the present case, if that is within the deputy's powers, but it is not an imme diately available option for the speedy resumption and continuation of the proceedings.
71. The law in England and Wales also foresees the ap pointment of a(nother) litigation friend who is dis tinct from a deputy as appointed by the Court of Protection, by a civil court of (specific) proceedings before them (see Civil Procedure Rules (CPR) Part 21), or by other tribunals as part of their general case management powers (see Equal Treatment Bench Book, pp 157 ff). Such litigation friend could, for example, be a solicitor, family member, a carer or social worker as the case may be. The appointment of a litigation friend may either be on application, or on the court's own initiative (Rule 21.6 CPR).
72. No appointment for such litigation friend by a court different from the Court of Protection, which could also have served as representative in the present case, has been made either.
73. While the autonomous law of the EPC applies to the question of the appellant's legal capacity, and the implications for the present proceedings, as outlined above, national laws might also be considered to ensure adequate protection and, in the present case, a liti gation-friend type representation in line with, and at the same protection level as, the national system of England and Wales where the appellant is domiciled.
However, the appellant's and the board's efforts to find a suitable person (also physically) close to him, who could possibly act as his representative before the EPO in a convenient and practical way, and in accor dance with the national rules on the ground, did not bear fruit for quite some time.
74. Finally, the appellant himself has brought forward the names of two solicitors of his choice whom he considers suitable to represent him in the proceedings before the EPO.
75. Since the appellant is in a state of legal incapacity, as outlined in detail above, he could not validly authorise them directly as his representatives of choice (see national jurisprudence, e.g. LG Dortmund 1 S 33/15, OGH 3 Ob 183/99d). Moreover, there does not appear to be any court or other authority under the law of England and Wales available which could appoint them to act as representative before the EPO in reasonable time.
76. For the time being, therefore, there is thus no al ternative to the EPO themselves appointing a represen tative, in particular the competent department of first instance, and thus resuming and continuing the proceedings before them.
77. Preferably, this could be (one of) the representatives of the appellant's choice, as suggested by the appel lant, and/or the assistance of a professional represen tative nominated by epi.
78. Rule 151(2) EPC provides for the appointment of a com mon representative for a multitude of applicants, in certain circumstances. The concept of the appointment of a representative for legal proceedings is thus in herent in the system of the EPC, and can, as a matter of principle, be applied to any case such as the present one, where a representative is essential to gua rantee the participation of a legally incapable person as party and thus a fair trial. Such an appoint ment by the administrative or judicial authority of the proceedings is also in accordance with the principles of procedural law generally recognised in the Contracting States to the EPC (see Article 125 EPC).
79. On this basis, the competent department of first in stance will have to appoint a representative and continue the proceedings.
Reimbursement of the appeal fee
80. Although there were clear indications to the contrary, no ex officio assessment of the appellant's state of health was carried out in first instance, and, as a result, the proceedings were continued despite the fact that the appellant had entered a state of legal inca pacity, rendering those proceedings null and void. Moreover, no decision on interruption of the procee dings was taken, despite the appellant's request to that effect (cf. Case Law V.A.11.6.1 c)(ii) and J 23/96).
81. Finally, the appeal leads - inter alia - to remittal of the case to the first instance for further prosecution, and thus - as a consequence - to the "granting" of the relief sought by the appellant (Case Law V.A.11.5). In the light of the foregoing, reimbursement of the appeal fee, which is also to be examined ex officio (Case Law V.A.11.2), is equitable (Rule 103(1)(a) EPC; cf. again T 854/12, Case Law V.A.11.7).
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