CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The application EP 3 265 852, originally filed under the PCT, relates to an ionizing radiation detection device.

Brief outline of the case

An action on property of the application was filed by C-Rad Imaging AB (C-Rad)  before the Stockholm District Court. This decision was appealed before Svea Court of Appeal, in the following the Swedish court, which decided that Beamocular and C-Rad were co-applicants.

C-Rad requested to be included as co-applicant of the above-mentioned European patent application. Beamocular objected to this request, essentially and effectively on the grounds that the Swedish decision did not qualify as a decision within the meaning of Art 61(1), and that there was no basis for any succession of the title to the invention.

The Legal Division ordered a resumption of proceedings with both parties as co-applicants. Later, the Legal Division declared the resumption of the proceedings null and void in view of the request of Beamocular for an appealable decision.

Beamocular thus appealed the decision of the Legal Division to resume grant proceedings.

Beamocular’s point of view

Beamocular filed a notice of appeal. In its statement of grounds of appeal filed on 23 February 2023, it requested-

• that the appealed decision be set aside and
• that the patent grant proceedings be resumed with it as the sole applicant.

For Beamocular the Swedish decision merely states that C-Rad has a better right to half of the invention, without granting it entitlement to half of the application itself.

Therefore, it argues that the subject of the decision is entitlement to the invention and not to the application. The mention of the application in the order is solely to delineate the invention under consideration.

In its view, the Swedish Court could not decide on entitlement to the application because “patent applications” had been removed from C-Rad’s request. The Legal Division was wrong in acknowledging that this change was merely an alignment with the wording of Art 17 and 18 of the Swedish Patents Act.

These provisions were also not applicable to the case since they apply to the Swedish patent authority and not the Swedish Court, and since they concern entitlement disputes on Swedish patents and not European patents.

The EPO is bound by the order of the Swedish decision and cannot interpret it beyond its explicit scope, which does not encompass entitlement to half of the application.

C-Rad’s point of view

C-Rad requested that the appeal be dismissed, i.e. that the patent grant proceedings be resumed with Beamocular and it as co-applicants.

Before the Swedish first-instance proceedings, C-Rad considered that it had a better right to half of the invention. Before the appellate court this request was not pursued.

The board’s decision

For the board, it is undisputed that the Swedish decision is a final decision.

The Board, in line with the decision under appeal, held that despite this amendment, there was no change in substance.

Whether the requests made by C-Rad before the Swedish Court, or the Swedish decision itself, explicitly mention “all patent applications and patents which these [inventions] may result in”, the Swedish decision can only be construed as affirming C-Rad’s entitlement to half of the right to the grant of the European patent for the invention as claimed in the application.

Although Beamocular asserts that the application remains unaffected by the decision, it has failed to provide a credible explanation of the interpretation of the phrase “better title [ . . . ] to half of the [ . . . ] invention.

Specifically, in the context of the Swedish decision, the Board finds it difficult to comprehend the distinction drawn by Beamocular between “entitlement to half of an invention specified in the patent claims in a European patent application” and “entitlement to half of said application”.

Beamocular was unable to explain what legal mechanism would allow ownership of an invention to be transferred to its rightful owner other than by transferring the corresponding, already published patent application.

The Board further disagreed with Beamocular’s assertion that a decision within the meaning of Article 61(1) EPC must explicitly refer to the “right to the patent application and patents that may be issued [thereof]”, citing similar decisions Stockholm District Court which did indeed include such a reference.

However, the absence of this specific language does not preclude a decision from qualifying as an entitlement decision under Art 61(1). As noted by Beamocular itself, courts are bound by the requests of the parties, and the wording of decisions in similar cases may vary accordingly.

From the perspective of the EPC and the EPO, such variations are to be expected whether the decisions are issued in the same or different jurisdictions subject to the convention.

From the Board’s perspective, the meaning of the order of the Swedish decision in the current case corresponds to having a better right to half of the patent application filed for that invention. This interpretation of the order is not contradicted but supported by the rationale in the Swedish decision.

Moreover, the Board was content with C-Rad’s explanation that the amendment of its requests before the Swedish Court was merely a revision to align the wording of the requests with Articles 17 and 18 of the Swedish Patents Act.

Beamocular referred also to J 8/20, one of the Dabus decisions. For the bord, the conclusion reached in J 8/20, stipulating that the EPO must examine whether a statement filed under Art 81, second sentence falls within the scope of the EPC, does not apply to the circumstances of this case.

The statement under Article 81, second sentence indicating the origin of the right to the patent must be submitted by the applicant along with the request for grant, cf. R 19.

However, this requirement does not pertain to cases where a final sovereign decision of a national court has determined that a person other than the applicant is entitled to the grant of the European patent under Art 61(1).

In such instances, the matter of by whom and how the right to the patent was acquired is deliberated and settled by the competent national court, and the EPO is bound by the court’s conclusion without further requirement.

Comments

Beamocular is clearly a bad loser. This does not bode well for further proceedings.

Beamocular made at least a creative use of one of the Dabus decisions!

https://www.epo.org/en/boards-of-appeal/decisions/j230001eu1