I apologise in advance to the readers as the present post is rather long, but deserves it in view of the topic dealt with.
In the present case, no bibliographical data are directly available on the front page of the decision. The application number, EP 14811009, was however disclosed in Point I of the Facts and Submissionswhich reads:
“The applicant is a physical person residing in the USA. The case concerns his request for re-establishment of rights into the time limit for the statement of grounds of appeal against the ED’s impugned decision, which had rejected the applicant’s request for re-establishment of rights into the time limit for payment of the seventh renewal fee plus the additional fee for European patent application No. EP14811009”.
With the application number disclosed in full, it was very easy to find through the register the name of the applicant, as well as the names and locations of the representatives can be found out.
The application relates to a “Bio-mineralised cathode and anode materials for electrochemical cell”.
Brief outline of the case
The applicant was first represented by European professional representatives ST in T. The requests for re-establishment were made through a newly appointed European professional representative K, based in an office in W, with this office being part of a large international IP consulting group of professional representatives.
The applicant requested re-establishment of rights into the time limit for payment of the seventh renewal fee the plus additional fee, enclosing a “witness statement” made by him and other documentary evidence as to the course of events from mid-2020 to December 2020.
The applicant appealed the decision refusing the re-establishment by the ED.
OP were requested “in the event that rejection of the request for re-establishment of rights is contemplated without further written procedure”.
The appeal fee was paid the same day. However, no statement of grounds of appeal was subsequently submitted.
Eventually, the applicant requested that
– re-establishment into the time limit for the statement of grounds of appeal be granted
– the impugned decision be set aside and amended such that re-establishment into the time limit for payment of the seventh renewal fee the plus additional fee be granted.
In view of the situation, the due care criteria not being respected, there is no surprise that the both the requests for re-establishment were not granted.
Moreover the appeal was considered not admissible.
The decision is however interesting in view of the reasons why the LBA refused to hold OP at the request of the applicant. The refusal to hold OP was linked with the non-admissibility of an appeal.
The board’s point of view – Decision in written procedure
The LBA held that the requirement for immediate and complete substantiation of a request for re-establishment corresponds to the principle of “Eventualmaxime/Häufungsgrundsatz/le principe de la concentration des moyens“, according to which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage.
The LBA referred to German law, cf. Anders/Gehle, ZPO, 81**(st) edn. 2023, Grdz. II vor § 253 4.; Deixler-Hübner in Fasching/Konecny, Zivilprozessgesetze, 3**(rd) edn. 2017, II/2 § 149 ZPO; Gitschthaler in Rechberger, ZPO, 5**(th) edn., §§ 148 f 2, as well as to French law Article 1355 du code civil, Cass. ass. plén., 7 juillet 2006, n° 04-10.672.
The board held that it is not the purpose of OP in the context of proceedings for re-establishment to give the appellant a (further) chance to substantiate their factual assertions or to provide evidence despite the absence of factual assertions.
Dynamic interpretation of the EPC
The LBA then embarked on “a dynamic interpretation of the EPC”, as derived from Articles 31(1) and 31(3) Vienna Convention on the Law of Treaties, and considered that it must take account developments in national and international procedural law, notably as regards the guarantees of fair trial before a tribunal of law. Art 6(1) ECHR was mentioned to this effect.
No absolute right to OP
For the LBA there is no “absolute” right to OP upon a party’s request, but it is subject to inherent restrictions by the EPC and procedural principles generally recognised in the Contracting States of the EPO, cf. Art 125.
In that a statement of an intention not to attend OP is normally considered equivalent to a withdrawal of the request for OP, even if such a withdrawal had not been declared expressis verbis has also been brought forward. Case law on this topic is abundant.
The LBA, inter alia, mentioned T 757/17, J 25/03, claiming that the jurisprudence of the boards repeatedly also underlines that the requirement of legal certainty in due time, notably as regards intellectual property rights, is likewise recognised as a fundamental principle enshrined in the EPC on balancing an applicant’s interest in obtaining a legally valid patent and the EPO’s interest in bringing the examination procedure to a close by a decision to grant the patent. To said effect, it also mentioned G 3/97, Reasons 2.5 (does not exist), rather read 3.2.5.
Last but not least, the LBA referred to the RPBA20/21 and to T 731/21 with the emphasis on the defence of the parties’ rights to a fair hearing within a reasonable time.
The LBA concluded that if OP do not serve any legitimate purpose, the requirement of legal certainty in due time prevents a board from appointing them.
For the LBA, it is not the purpose of OP in the context of proceedings for re-establishment to give the appellant a further chance to substantiate their factual assertions or to provide evidence despite the absence of factual assertions in the request for re-establishment.
Taking into account the respect due to a judicial body, the present decision nevertheless deserves some comments.
Confidentiality broken by the board
What good is it to leave out on the front page of the decision all indications allowing the identification of the applicant and of the case, when in Point I of the “Facts and submissions”, the EP application number is disclosed?
The ins and outs of this decision
With the present decision, the LBA is clearly trying to limit the right for parties to have OP, in spite of the absolute right to OP enshrined in Art 116.
We assist here at the creation of a further link between an Art of the EPC, here Art 116, and the RPBA. In G 1/21 this was already the case for Art 116.
However, there exists a hierarchy of norms and this hierarchy should not be disrupted by secondary legislation, whatever some people might be thinking at the EPO. Coming up with the ECHR is actually misplaced. The EPC cannot be amended by secondary legislation, cf. Art172 and Art 164(2).
This is even more the case when the LBA refers to developments in national and international procedural law in two contracting states of the EPC, which actually counts 38 of them. The corresponding argument fails to convince.
Art 125 stipulates that it is in the absence of procedural provisions in the EPC, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States. There exist procedural regulations relating to OP, Art 116, R 115 and 116, so that the necessity to refer to the procedural law of only two contracting states of the EPC is not at all apparent.
The present decision is actually preparing the terrain for avoiding holding of OP if a board does think that OP would not be helpful. In this respect it is helped by the RPBA20/21 stipulating that everything must be submitted with the appeal brief or the response to this brief. What could then be the purpose of OP? If an appeal has no chance of success why then hold OP?
In T 247/20. It was held that OP would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing, albeit within the framework of the arguments, and of course the evidence, submitted in a timely fashion in the written proceedings.
The dynamic interpretation of the EPC
The LBA attempts to negate the absolute right to OP by a “dynamic interpretation” of the EPC. This is a dangerous way as the mechanisms under which the EPC and the Implementing Regulations can be amended are clearly set out in Art 172 and Art 164. Art 164 (2) even provides that the AC cannot amend the Implementing Regulations so that they enter in conflict with the EPC.
By being “dynamic”, such amendments are subject to the “zeitgeist”. In the presence of clear amendment mechanisms, dynamic interpretations of the EPC should be limited to an absolute minimum, if not avoided at any rate.
The decisions quoted are not directly applicable to the present situation
The lex specialis about OP before the Receiving Section. Art 116(2), cannot be considered generally applicable. As an exception, it should be applied with caution and cannot be taken as a pretext to generalise a ruling.
In G 2/19 it could be understood that an appeal by a person who never was a party to a procedure before the EPO should be dismissed, and that therefore an OP was not useful. G 2/19 had as well the purpose of confirming the legality of the transfer of the boards to Haar. In G 3/19, the rewriting of the questions and the “dynamic interpretation” of the EPC had clearly a political background.
When a party declares it does not intend to come or call in to OP it can be considered as having given up its right for OP. This is different from denying up front the right to an OP for a party requesting it.
In T 387/83 and in T 318/91 no abuse of procedure was detected, only the theoretical possibility of such an abuse was mentioned. This is different from the present situation.
In T 757/17, the proprietor withdrew the approval of any text for maintenance of the patent. In J 25/03, the applicant withdrew its application. That in such circumstances OP cannot serve any purpose is manifest, but is again not comparable with the present situation.
G 3/93 relates to opposition on behalf of a third party and the only concern was the emergence of the truth. This is again not comparable with the present situation.
T 731/21, dealt with the non-admissibility of late-filed requests and has nothing to do with refusing up front to hold OP.
The LBA claims that “examples identified by the jurisprudence of the boards demonstrate that the language of Art 116(1) is too broad as it literally covers also cases where the appointment of OP cannot be justified”. This might be true, but it is only through a rather biased interpretation of this jurisprudence, which is not applicable to the present instance, that the LBA arrived to this conclusion. It is not a purpose of the boards to amend the EPC, and by doing so wilfully ignore the existing amendment mechanisms.
The EBA, TBA and LBA decisions quoted in the present case might have for themselves their respective justifications. However, that, on this basis, a board empowers itself in deciding up front that if OP do not serve any legitimate purpose, the requirement of legal certainty in due time prevents a board from appointing them.
Holding an OP in such circumstances does by no means impairs the legal certainty and the right to be heard will have been respected. Insisting on the due time aspect of taking decisions boils down to gaining time and increasing the production resp. productivity of the boards. No more, but no less.
A decision like the present one, with its possible far reaching procedural consequences, is not a decision that should be taken by a single board of appeal.
The introduction of the RPBA20/21, has given a large discretion to the boards and looking at procedural case law, this discretion can go in various directions. In procedural matters it has become a kind of lottery for appellants and respondents. Depending on the BA receiving a case, similar situations are handled in a very dissimilar fashion.
Since R 6/20, commented on this blog, it is clear that the EBA acting under Art 112a is not willing to review the discretion exercised by boards. In view of the situation such created, it is high time to put some limitations to the exercise of discretion in the RPBA. This could however endanger the production/productivity of the boards.
The legal regulations and the jurisprudence quoted by the LBA do not seem complete.
In T 978/00, Reasons 6, penultimate §, it was held that the minutes of OP are not part of the decision and, as such, are not directly open to appeal. As a consequence the alleged SPV was not existing and the request for reimbursement of the appeal fee rejected.
In T 508/08, Reasons 2, it that held that, “if the first instance (in this case, the OD) sees fit to ignore its obligation [to correct the minutes], there is nothing the board can do in this respect. The board has no power to compel the opposition division to discharge its obligations.” As the party withdrew its appeal no decision was taken.
The following questions thus arise: when a division of first instance refuses to correct the minutes is an appeal at all admissible? Can OP be held?
Whilst the LBA cited Art 116(2), it manifestly missed out Art 116(3). According to Art 116(3) + R 97(2), a decision fixing the amount of costs of opposition proceedings cannot be appealed unless the amount exceeds that of the fee for appeal.
Questions: is such an appeal admissible? Can OP be held?
Art 116(3) and R 97(3) are manifestly rules of exception which should not unduly extended.
Opposition not admissible
If an opposition is not admissible and the reasons are absolutely clear as some essential formalities have not been carried out within the time limit for filing an opposition, an OP before the OD would also not serve any purpose, but to acknowledge that the opposition is not admissible.
Is it then acceptable that an OD refuses to hold OP in such a situation? I take bets that a BA would quickly conclude that the OD committed a SPV. Why can then a board refuse to hold OP if the OP manifestly serves no purpose?
After all, Art 116 and R 115 and 115 make no distinction between OP before a first instance department and the boards of appeal. This comment was also valid for G 1/21 in which the decision was limited to OP before the boards by rewriting the referred question.