J 0005/23 - Interpreting the EPC in the Rules, under the VCLT

Key points

•  What is a signature in the sense of Art.72 EPC? And who decides?
• The focus of this post is on the institutional considerations. In particular, is the President of the EPO and/or the Administrative Council competent to provide interpretations of the Articles of the EPC that are binding on the Boards of Appeal? That question was left unanswered by G 3/19, where the Enlarged Board did not comment on the legal status of Rule 28(2), which rule purports to give a binding interpretation of Art.53(b). 
• As G 3/19 was politically rather sensitive, leaving the institutional housekeeping to the Legal Board probably made sense. The present case, about such an obscure topic as the definition of signatures, is an excellent vehicle. The present decision will be cited or studied for many years, each time the EPO wishes to establish some "clarification" of the EPC Articles that binds the Boards of Appeal. 
• The Legal Board: "When interpreting the provisions of the EPC, the principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT) must be applied (G 5/83 ... )."
• "According to the Enlarged Board of Appeal, the starting point of interpretation under Article 31 VCLT is the wording, i.e. the "objective" meaning of the term to be interpreted, regardless of the original "subjective" intention of the contracting parties "

Article 31  VCLT - General rule of interpretation

1. A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

2. The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes: (a) any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connection with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.

3. There shall be taken into account, together with the context: (a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions; (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation; (c) any relevant rules of international law applicable in the relations between the parties.

4. A special meaning shall be given to a term if it is established that the parties so intended.

Article 32 Supplementary means of interpretation 

Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31: (a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable.

• "the Board provides the following dictionary extracts by way of example only, as a first approximation for establishing the most common usage of the term "signature" in the context in which this term is used in Article 72 EPC, i.e. in the context of signing a contract."
• "When applying the "general rule of interpretation" pursuant to Article 31 VCLT, account must be taken of the object and purpose of the treaty to be interpreted. This includes taking account of the underlying purpose of the specific provision to be interpreted"
• " According to the "general rule of interpretation" pursuant to Article 31 VCLT, legal terms must be interpreted in their context. The immediate context of the term "signature" in Article 72 EPC, i.e. the other terms contained in this legal provision - which provide the context of the document on which the "signature" must be provided (i.e. the assignment contract) - was already taken into account in the above analysis and interpretation. The material to be taken into account for a systematic interpretation is, however, not limited to this immediate context. For the following reasons, it in fact includes the entirety of the articles of the EPC, as well as the Implementing Regulations to it."
• "At the Munich diplomatic conference 1973, not only the articles but also the Implementing Regulations to the EPC 1973 were directly concluded between the contracting states"
• " Article 164(1) EPC (1973) states that the Implementing Regulations "shall be integral parts of this Convention". Through this definition, the contracting states made the Implementing Regulations to the EPC 1973 part of the "text" of the treaty to be taken into account as context within the meaning of Article 31(2) VCLT. Even if this were not the case, the context to be taken into account under Article 31(2) VCLT includes not only the text of the treaty but also, according to point (a), "any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty". At the very least, the Implementing Regulations to the EPC 1973 must be deemed such an agreement."
• "The legal situation is less clear with regard to subsequent amendments to the Implementing Regulations. In Article 33(1)(c) EPC, the contracting states to the EPC empowered the Administrative Council, as an organ of the international organisation created by the EPC, to amend the Implementing Regulations. Accordingly, none of the subsequent amendments to the original Implementing Regulations were concluded between the contracting states to the EPC themselves but were adopted by the Administrative Council."
• "the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC "
• "The Enlarged Board of Appeal confirmed that subsequent amendments to the Implementing Regulations are to be taken into account when interpreting an article of the EPC (see G 2/12, VII.4(1))"
• This deals with the Biotech Directive provisions in the Implementing Regulation, where the AC began codifying interpretations of Art.53 EPC in the Implementing Regulations. Those provisions are considered binding for the Boards in some case law, but this raises the question of the competence of the AC to lay down interpretations of the EPC articles, in a manner that binds the  Boards, is unfettered, or what the restrictions are (e.g. the AC can lay down any interpretation that is not directly contradicting the EPC wording, to 
• "In G 2/12, Reasons VII.4(1), the Enlarged Board of Appeal referred to the interpretative means under Article 31(3) VCLT concerning, in point (a), any subsequent agreement between the parties regarding the interpretation of the treaty or its application and, in point (b), any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation. The present Board notes that the mandatory interpretative means to be taken into account for interpretation under Article 31(3)(a) and (b) VCLT "together with the context" have the same interpretative weight as the "context" under Article 31(2) VCLT. Hence, regardless of whether subsequent amendments to the Implementing Regulations are subsumed under Article 31(2) VCLT or under Article 31(3)(a) and (b) VCLT, they are to be taken into account in a systematic interpretation of an article of the EPC."
• The point about "regardless" is the following: " the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC (i.e. the "treaty" under Article 31(2) VCLT). Rather, the statement in said Article is applicable to the current Implementing Regulations as well. Articles 33(1)(c) and 164(1) EPC could accordingly be understood as provisions by which the contracting states empowered the Administrative Council of the European Patent Organisation ("EPOrg") to implement the articles of the EPC in the Implementing Regulations such that they can also change the context in which the articles themselves have to be interpreted."
• "While under the present legal framework the term "signature" must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term "signature" in the Implementing Regulations (see G 3/19, Reasons XXVI.4)
• Note, G 3/19 point XXVI.4 does not say so. The introductory signal see here is probably used in a rather specific Bluebook meaning ("See indicates that the source clearly, though indirectly, supports a proposition. That is, the source does not directly state your proposition, but if a reader checked the source, it would be immediately clear to her that it supports your proposition." (link))
• "Taking due account of the rationale underlying Article 72 EPC (see points 2.4.2 and 2.4.3 above), such a definition could include a reference to some form of electronic signature and still respect the boundaries set by Articles 72 and 164(2) EPC. Providing such a definition in the Implementing Regulations would then change the context in which the term "signature" in Article 72 EPC is interpreted pursuant to Article 31 VCLT (see points 2.5 to 2.5.6 above), both by the departments of the EPO and by national courts.'"
• Note, the legal status of the Rules can differ: 1) an original Rule adopted at the 1973 Munich Conference, being "contemporary" context under Art.31(2)(a), 2) a provision that implements a delegation of legislative power in an Article (e.g. all formal requirements under Art.78(1) EPC), or 3) interpretative provisions that are subsequent agreement under Art.31(3) VCLT. 
• Note, the envisaged Rule would not be binding. It would be 'context' under the VCLT. Hence, it would be one factor under the general rule of Art. 31 VCLT: "The "general rule of interpretation" is a single rule of interpretation. It requires several methods of interpretation - in particular the grammatical, systematic and teleological methods - to be applied in a holistic manner. The "ordinary meaning" of a certain term is not to be determined in the abstract, but only emerges in the specific context in which it is used, taking account of the rationale underlying the legal provision to be interpreted."
• "The appellant also referred to the "Notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC" (OJ EPO 2021, A86; hereinafter referred to as the "Notice"). The Notice provides inter alia "information about the practice of the Legal Division" in respect of electronic signatures attached to documents submitted as evidence to support requests for registration of a transfer of rights. For the following reasons, [the Notice] is not to be taken into account for the interpretation of Article 72 EPC either."
• "the Notice on which the Legal Division based its decision does indeed deviate from a provision of the EPC, namely from Article 72 EPC as interpreted by the Board as per the above analysis (and as understood by the Legal Division until the publication of the Notice). The Notice's aim of "facilitat[ing] communication by electronic means" with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, the Notice is not a legal instrument passed by a competent legislative body, so it can neither implement nor specify any articles of the EPC (or, for that matter, of the Implementing Regulations to it). It is not part of the material referred to in Article 31(2) and (3) VCLT, and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC. Hence, the contents of the Notice have no bearing on the interpretation of the term "signature" in Article 72 EPC."

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2558/18 - Rule 71(6) not applicable under Art.164(2) EPC

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. 

EPO T 2558/18 

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 - The Board invokes Art. 164(2) EPC

 Key points

• Published currently without comments. 
• A draft version of this post was inadvertently posted by mistake. Please see the retraction notice and message here. 
• The post title refers to the following part of the decision: “Der Vorrang von Artikel 111 EPÜ in der obigen Auslegung gegenüber Regel 71 (6) EPÜ in Bezug auf Änderungen ergibt sich aus dem EPÜ. Artikel 164 (2) EPÜ bestimmt ausdrücklich: Bei mangelnder Übereinstimmung zwischen Vorschriften des Übereinkommens und Vorschriften der Ausführungsordnung gehen die Vorschriften des Übereinkommens vor. Daraus folgt auch, dass Regel 100 (1) EPÜ, nach dessen Wortlaut Regel 71 (6) EPÜ betreffend Änderungen anwendbar wäre, im Einklang mit Artikel 111 EPÜ einschränkend - und diese Anwendbarkeit ausschließend - auszulegen ist. ”

T 2558/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t182558du1.html

In the below, formatting is only partially reinstated, please consult the PDF version of the decision for the original formatting.

Entscheidungsgründe

1. Mit der angefochtenen Entscheidung vom 4. Juni 2018 hat die Prüfungsabteilung den am 23. Februar 2018 eingereichten Anspruchssatz gemäß Regel 137 (3) EPÜ nicht zum Verfahren zugelassen, weil die Änderung in Anspruch 1 Artikel 111 (2) EPÜ widerspreche. Die deutliche Entscheidungsformel der Entscheidung der Beschwerdekammer in der Sache T 1891/12 vom 10. Juli 2017 habe zur Folge, dass die Unterlagen, d.h. Beschreibung, Ansprüche und Zeichnungen, res iudicata seien und nicht mehr angetastet werden könnten. Da der Hauptantrag nicht zum Verfahren zuzulassen sei und keine weiteren Anträge vorlägen, fehle ein im Verfahren befindlicher Anspruchssatz. Die Anmeldung erfülle daher nicht die Erfordernisse des Art. 78 (1) c) EPÜ. Deshalb könne ein Patent gemäß Artikel 97 (1) EPÜ nicht erteilt werden.

T 1854/19 - Implicitly overruling the Administrative Council

 Key points

• This is a follow-up case to G 3/19 (Pepper). In pepper, the Enlarged Board gave a new interpretation of Article 53(b) EPC which corresponds to Rule 28(2) EPC in excluding ‘essentially biological plants’ from patentability (but in fact appears to exclude more from patentability than Rule 28(2) EPC). The Enlarged Board said in G 3/19 that “this negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending”; the ‘negative effect’ is that of Article 53(b) EPC for the types of plant-related subject-matter recited in G 3/19 hn.1. 
• However, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision Administrative Council 29.06.20147 OJ 2017 A56.
• The Enlarged Board in G 3/19 has not said (or at least not explicitly) that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid.
• Therefore, G3/19 strictly speaking leaves open the question of whether Rule 28(2) is to be applied to applications filed before 01.07.2020
• The present Board: “In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 [...]- has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 [OJ 2017 A56] that introduced Rule 28(2) EPC.”
• This Board finds that “the subject-matter of the set of claims of the main request is not excluded from patentability” because of the filing date of the present application and because " Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 is applicable to the present application”. Strictly speaking, the present Board still does not say that Rule 28(2) is not applicable to this application but this is unambiguously implied by finding that the subject-matter is not excluded from patentability. 
• So this Board finds that the Enlarged Board implicitly overruled the Administrative Council in G3/19.
• I note that said Article 3 of said Decision of the AC is not strictly speaking a provision of the Implementing Regulation, so it is not clear if Article 164(2) applies. 

EPO T 1854/19 - - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request - claims 1 to 14

Exceptions to patentability (Article 53(b) EPC)

2. In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 of 14 May 2020 and being consequential to the introduction of Rule 28(2) EPC on 1 July 2017 - has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 that introduced Rule 28(2) EPC.

3. Thus, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 (OJ EPO, 2016, A27 and A28) is applicable to the present application and the subject-matter of the set of claims of the main request is not excluded from patentability.

4. The board thus considers the appeal allowable.

T 0700/15 - Claim amendments and the RPBA

Key points

• The Board does not admit the auxiliary requests of patentee filed after the Statement of grounds. The patentee raises the question of what exactly the legal basis is for holding amended claims inadmissible in appeal. 
• T 1914/12 held that Article 114(2) EPC does provide a legal basis for holding arguments inadmissible (with the result that arguments are now called 'facts' by the Boards). Article 114 EPC does not mention amended claims either. T 1914/12 also recalled that "The RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not" (CLBA V.A.4.10.1).
• “Weder unter Geltung der VOBK 2007 noch bei den Beratungen zur Neufassung der revidierten Fassung der VOBK 2020 ist zu irgendeinem Zeitpunkt in Frage gestellt worden, dass das nun in den Artikeln 12 und 13 VOBK 2020 geregelte Ermessen der Kammern bei der Zulassung von geänderten Patentansprüchen im Beschwerdeverfahren und somit auch die eindeutige und langjährige Rechtsprechung der Großen Beschwerdekammer und der Beschwerdekammern des EPA nach Artikel 23 VOBK in Widerspruch zu dem Geist und Ziel des Übereinkommens stehen würde.”
• “Dieses Ermessen [to hold arguments inadmissible] der Kammern steht daher nach Artikel 23 VOBK 2020 weder in Widerspruch zu Artikel 114(2) EPÜ noch besteht aus dem selben Grund eine rechtliche Grundlage dafür, im Umkehrschluss aus Artikel 114(2) EPÜ zu folgern, dass die dort nicht erwähnten, auf Änderung von Patentansprüchen gerichteten verspäteten Anträge jederzeit und ohne weiteres zuzulassen wären”.

• See also T 0754/16 where the Board said that  "Neither does Article 114(2) EPC provide a basis for disregarding these requests, since, firstly, it does not apply to late filed requests in the form of amended claims, but only to late filed facts and arguments (see Bühler in Singer/Stauder, Europäisches Patentübereinkommen, 7. Auflage 2016, Artikel 114, point 52). "
• The present Board: “Die Kammer stellt zunächst fest, dass die Verfahrensordnung der Beschwerdekammern ihre Rechtsgrundlage in Artikel 23(4) EPÜ i.V.m. Regel 12c(2) AOEPÜ hat. ”
• As a comment, I find it unclear why the Board refers to the procedure of amending the RPBA of Article 23(4) EPC. If Article 23(4) EPC provides a general competence to give the Boards a competence to hold arguments inadmissible, without further legal basis in the EPC being necessary,  then clearly contrary to T 1914/12  the RPBA can give new powers to the Boards "that the EPC did not". This seems remarkably similar to the question of whether Article 33(1)(c) EPC provides the Administrative Council with the competence to forbid plant-related inventions. If the procedure of Article 23 EPC provides the legal basis for putting anything in the RPBA that the competent body wishes (constrained only by Article 164(2) EPC), without any need for a further legal basis in the EPC, the same could apply for Article 33 EPC.
• Note that Article 123(1) EPC also applies to patents. I would say that Rule 79(1) corresponding to Rule 57 EPC 1973 (and Rule 100(1) EPC) could be relevant in view of T 0406/86 (as of yet cited in GL D-VI 4.2), in particular r.3.1.5. That decision did not rely on Article 114(2) for holding the late-filed claim amendments of patentee inadmissible. 

EPO T 0700/15 - link

XX. Mit Schriftsatz vom 8. Januar 2020 hat die Beschwerdeführerin beantragt, der Großen Beschwerdekammer folgende Fragen vorzulegen:

 "1. Ist Art. 12(2) VOBK derart auszulegen, dass die im letzten Teilsatz des 2. Satzes genannten Tatsachen, Argumente und Beweismittel auch Anträge auf Änderungen der Patentansprüche einschließen?

Falls nein, erfordert der in dem 1. Satz von Art. 12(2) genannte vollständige Sachvortrag eines Beteiligten zwingend die Stellung der Anträge auf Änderungen der Patentansprüche? 

2. Sind im Falle der Ermessensabhängigkeit gemäß Art. 13(1) von Anträgen auf Änderungen der Patentansprüche, die im Beschwerdeverfahren gestellt werden, diese Anträge in Ausübung des Ermessens zuzulassen, wenn zum Zeitpunkt der Antragstellung der Berichterstatter weder gemäß Art. 5 (3) noch gemäß Art. 5 (5) die sachliche Bearbeitung der Abfassung eines Bescheids oder des Entwurfs der Entscheidung aufgenommen hat? Ist die Zulassung dieser Anträge jedenfalls dann zu bejahen, wenn dem Beschwerdeführer kein anderer Beteiligter gegenübersteht?" 

Die Beschwerdeführerin hat zu den unter Ziffer 1. genannten Fragen einerseits auf den Unterschied im Wortlaut von Art. 12(2) und Art. 13(1), anderseits auf Art. 23 VOBK und die Anwendung der Verfahrensordnung im Hinblick auf Artikel 113(2) und 114(2) und Regel 76(1)c) und 116(1) des Übereinkommens verwiesen. Zu den unter Ziffer 2. genannten Fragen hat die Beschwerdeführerin vorgetragen, dass die zwischen der Einreichung der in Frage stehenden Hilfsanträge und der Mitteilung der Kammer liegende Zeitspanne weder dazu führte, dass dadurch eine Verzögerung des Verfahrens verursacht noch eine Verlegung der mündlichen Verhandlung nötig würde. Infolge der Rücknahme des Einspruchs sei die Einsprechende nicht mehr am Verfahren beteiligt, so dass ihr deshalb keine Gelegenheit zur Äußerung mehr gegeben werden müsste.

Entscheidungsgründe

Rücknahme des Einspruchs

1. Durch die Rücknahme ihres Einspruchs ist die Einsprechende/Beschwerdegegnerin in Bezug auf die Hauptsache, d. h. die materiell-rechtlichen Fragen betreffend Bestand und Umfang des Patentrechts, nicht mehr am Beschwerdeverfahren beteiligt (siehe T 789/89, ABl. EPA 1994, 482).

2. In einem solchen Fall hat die Kammer die Entscheidung der Einspruchsabteilung inhaltlich zu prüfen. Dabei können Beweismittel und Argumente, die von der Beschwerdegegnerin vor der Zurücknahme ihres Einspruchs vorgebracht worden sind, herangezogen werden (siehe T 629/90, ABl. EPA 1992, 654; T 46/10).

J 0016/96 - Competence to interpret

Key points

• Today, by way of exception, an old decision J 16/96 wherein the Legal Board sheds some light on the competence of the Administrative Council to take binding decision on the interpretation of legal provisions.
• The Legal Board: "Under Article 33 (1)(b) EPC, the Administrative Council of the European Patent Organisation is competent to amend the Implementing Regulations. However, the Convention does not expressly authorise the Administrative Council to take generally binding decisions on the interpretation of the Convention."
• As a comment, the phrase "however" in my view indicates that even though the AC is competent to amend the Implementing Regulations, this does not mean that the AS is competent to "take generally binding decisions on the interpretation of the Convention". In J 16/96, the interpretative decision at issue was a special decision (not laid down in the Implementing Regulations, but only in the minutes of the AC meeting) but the reasoning of the Legal Board appears to extend to the AC laying down binding decision on the interpretation of the EPC by amendment of the Implementing regulations.
• The Legal Board: "In the law of international organisations, it is a recognised principle that bodies competent to lay down internal law may claim a corresponding degree of competence to interpret that law". This appears to mean that the AC has a "degree to competence" to interpret the Implementing Regulations (since the AC is competent to lay down the Implementing Regulations). However, the cited passage does not support the position that the AC is competent to interpret the EPC Articles which are laid down (not by the AC, but) by the Diplomatic Conference (together with ratification).  
• The AC decision at issue (to be found in the minutes of the 4th AC meeting, according to the Legal Board J16/96; these minutes are secret as a far as I know) concerned "the interpretation of the provision of Rule 101(9) EPC [1973] [ R.152(11)]"
• The Legal Board: "In so far as the decision on a matter of interpretation - as in the present case - concerns a provision of the Implementing Regulations, the Administrative Council acted within the scope of its authority." So, the AC was competent to interpret Rule 101 EPC 1973. 

J 0016/96 - link

2.1 Under Article 33 (1)(b) EPC, the Administrative Council of the European Patent Organisation is competent to amend the Implementing Regulations. 
However, the Convention does not expressly authorise the Administrative Council to take generally binding decisions on the interpretation of the Convention.

In the law of international organisations, it is a recognised principle that bodies competent to lay down internal law may claim a corresponding degree of competence to interpret that law (see Seidl-Hohenveldern, Das Recht der Internationalen Organisationen (...), 5th ed., p. 233, No. 1614). 
In so far as the decision on a matter of interpretation - as in the present case - concerns a provision of the Implementing Regulations, the Administrative Council acted within the scope of its authority. The appellants have not disputed this.

T 1063/18 - Plants and Rule 28 (Pepper)

Key points

• The written decision in the Pepper case is now available. The Technical Board decided that recently added Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). The Technical Board decided that "in accordance with Article 164(2) EPC, the provisions of the Convention prevail".
• "In the decision under appeal, the examining division reasoned that Rule 28(2) EPC constitutes a "clarification of the scope of Article 53(b) EPC". The board however cannot deduce from decisions G 2/12 and G 2/13 any other interpretation of Article 53(b) EPC than that plants are not excluded from patentability, even if they can only be obtained by an essentially biological process. Since [new] Rule 28(2) EPC excludes plants or animals exclusively obtained by means of an essentially biological process from patentability, its meaning is in conflict with the meaning of Article 53(b) EPC as interpreted by the EBA."
• "In the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC, as interpreted by the EBA. In view of this direct contradiction, interpreting Rule 28(2) EPC in such a way that no contradiction exists is not possible."
• "The board agrees with the finding in decision T 39/93 (see Reasons, point 3.2) that "the meaning of an Article of the EPC (...), on its true interpretation as established by a ruling of the Enlarged Board of Appeal cannot, (...), be overturned by a newly drafted Rule of the Implementing Regulations, the effect of which is to conflict with this interpretation". The board concludes that it must apply decisions G 2/12 and G 2/13 unless it has reasons to refer the same question underlying these decisions for reconsideration by the EBA."
• The Board sees no reasons for a new referral to the EBA. The Boards observes that the Notice of the Commission of the EU of 8 November 2016 "has no legal authority." In particular, within the legal framework of the EU, binding interpretations of the Biotech Directive are to be given by the CJEU. Accordingly, also the argument that new Rule 28(2) EPC served to ensure consistency between the Biotech Directive and the EPC fails because the presumption that the Biotech Directive has to be interpreted as set out in the Notice is not valid.
• "If the adoption of Rule 28(2) EPC by the Administrative Council [...] were to be considered a subsequent agreement in the sense of the Vienna Convention and used for the interpretation of Article 53(b) EPC, this would reverse the meaning of Article 53(b) EPC as interpreted by the EBA (see point 24 above), i.e. it would represent an amendment of an Article of the Convention." However, the AC is not competent to amend Article 53(b) EPC. - 20.02.2019: here I originally omitted a key phrase from the decision: "However, the Administrative Council is not, in the light of Articles 33(1)(b)and 35(3) EPC, competent to amend the Convention, here Article 53(b) EPC, by amendment of the Implementing Regulations, here Rule 28(2) EPC."   
• As a comment, T 39/93 was (in relevant part) about what is now Rule 116 for which G 6/95 found that Rule 116 does not apply to the Boards. G6/95 was about whether the Boards are required to issue a preliminary opinion, T 39/93 is (in the relevant part, namely headnote I) about whether Rule 116 affects the rules for admitting documents in appeal. I note that T 39/93 is more frequently cited for its headnote II about the "subjective" technical problem, or for its headnote III about the skilled person does not have any inventive capability. Its headnote I is that Rule 116 " should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded and evidenced throughout the proceedings prior to the hearing of the appeal". The present decision refers to point 3.2 of T 39/93 where the Board "for the sake of completeness" reasoned that "the Board cannot accept the Appellant's legal proposition that an amendment to a procedural rule [of Rule 116] is capable of overriding those well-established legal principles, laid down in the points of law above referred to, that define the nature and function of appeals, and in particular the scope and effect of Article 114(1) EPC in relation to that function." (which is followed by the sentence quoted above).

EPO Headnote

Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. In accordance with Article 164(2) EPC, the provisions of the Convention prevail.

EPO T 1063/18 - T1063/18 - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request

Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC

2. Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC of the subject-matter of claims 1 and 2 was the sole reason given in the decision under appeal for refusing the application.

3. Article 53(b) EPC excludes from patentability "plant or animal varieties or essentially biological processes for the production of plants or animals".

Decisions G 2/12 and G 2/13

4. Decisions G 2/12 (OJ EPO 2016, A27; Tomato II) and G 2/13 (OJ EPO 2016, A28; Broccoli II) of the Enlarged Board of Appeal (EBA) concern the patentability of plants directly obtained by and/or defined by an essentially biological process, the meaning of "essentially biological process for the production of plants" having already been defined in decisions G 2/07 (OJ EPO 2012, 130; Broccoli I) and G 1/08 (OJ EPO 2012, 206; Tomato I). The EBA considered that what remained to be determined was: whether or not the exclusion from patentability of essentially biological process for the production of plants "is limited to method or process claims or whether it also encompasses a patent claim for a product that is directly obtained and/or defined by an 'essentially biological process'." The EBA gave an interpretation of the meaning of this aspect of Article 53(b) EPC, considering its wording, the legislator's intention and taking into account the aspect of subsequent agreement and practice within the meaning of Article 31(3) Vienna Convention on the law of treaties, concluded at Vienna on 23 May 1969 (further referred to as: the Vienna Convention), as well as a systematic and historical interpretation (see Reasons, point VII.).

5. The EBA stated that applying the various methodical lines of interpretation to Article 53(b) EPC pointed towards not extending the scope of the process exclusion pursuant to Article 53(b) EPC "directly to a product claim or a product-by-process claim directed to plants or plant material such as a fruit, or to plant parts other than a plant variety" (see Reasons, points VII.6.(2) and (3)).