EP 3 008 767 A1 relates to a bio-mineralised cathode and anode materials or an electromechanical cell.
Brief outline of the case
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 ED’s decision refusing the re-establishment.
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.
Both the requests for re-establishment were not granted.
Moreover the appeal was considered not admissible.
The applicant filed a petition for review.
The petition for review was successful and the case has been send back to the legal board of appeal.
The catchword of J 6/22.
1. 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.
2. Dynamic interpretation of the EPC, as derived from Art 31(1) and 31(3) Vienna Convention on the Law of Treaties (VCLT), must take account of developments in national and international procedural law, notably as regards the guarantees of fair trial before a tribunal of law, cf. Art 6(1) ECHR.
3. 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.
4. If OP do not serve any legitimate purpose, the requirement of legal certainty in due time prevents the bBoard from appointing them.
5. 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.
The catchword of R 16/23
1. As OP had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the board should have arranged for the holding of OP pursuant to Art 116(1) before taking any such adverse decision.
2. The failure to arrange OP constitutes a fundamental procedural defect within the meaning of Art 112a(2)(d) and R 104(a) since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal.
3. As a consequence, the decision is to be set aside, proceedings before the board are to be re-opened and the fee for the petition for review is to be reimbursed.
Dynamic interpretation in R 16/23
The board’s, not to arrange for the holding of the OP requested by the petitioner before making its decision that terminated the appeal proceedings was contrary to Art 116.
It is well-established since the very first decisions of the EBA that the legal provisions of the EPC are interpreted by applying the principles of interpretation set out in Art 31 and 32 of the VCLT, cf. G 1/83, OJ EPO 1985, 60, Reasons 1 to 6; Case Law of the Boards of Appeal, 11th edn. 2025, “CLBA”, III.H.2.2 and decisions cited therein.
It follows from a reading of Art 31 and 32 VCLT taken together that the provisions of a treaty, here the EPC, must first be construed according to the ordinary meaning of the terms in their context and in the light of its object and purpose. It can also be derived from the wording of Art 32 VCLT that preparatory documents are primarily to be taken into consideration in order to confirm a meaning or to determine a meaning, if the first and ordinary means of construction would lead to ambiguity or to an absurd result.
As set out in the decision under review it is also established, see decision G 3/98, OJ EPO 2001, 62, Reasons 2.5, that a dynamic interpretation might come into play where considerations have arisen since the EPC was signed which might give reason to believe that a literal interpretation of the wording of the relevant provision would conflict with the legislator’s aims.
Article 116(1), first sentence, provides that “[o]ral proceedings shall take place either at the instance of the EPO if it considers this to be expedient or at the request of any party to the proceedings”.
According to the wording of this provision, formulated accordingly in all three official languages, the aspect of expediency refers only to the first alternative, where OP take place at the EPO’s own initiative.
Thus, the department concerned with a request for OP made by a party to the proceedings has no discretion over whether or not OP take place. The holding of the requested OP is mandatory for all departments entrusted to carry out the procedures laid down in the EPC, cf. Article 15(a-g). Accordingly, the EPC establishes a party’s right to OP upon request in proceedings before the EPO.
The EPC provides that OP do not have to take place in all circumstances. Based on Art 116(1), second sentence, Art 116(2) and R 88(4), the EBA noted three situations in which OP are not required to be held.
None of these situations applied in the circumstances underlying the decision under review.
The right to OP upon request applies without any distinction as to whether the proceedings are before the administrative departments of the EPC, or before the boards of appeal, as the first and final judicial instance in the procedures before the EPO, i.e. also in the proceedings before the LBA. It may be noted in this context that Art 116 likewise applies, at all stages, in the proceedings concerning a petition for review under Art 112a.
The extraordinary legal remedy of Art 112a was introduced by the legislator in response to decision G 1/97 in the course of revising the EPC in 2000 in order to enable an adversely affected party to request a review of a board of appeal decision.
The EBA noted that, during the preparatory work for creating of that legal remedy, a draft provision which was aimed at limiting the scope of the right to OP in these proceedings was rejected.
Comments
The message of the EBA is loud and clear and the inventor of the dynamic interpretation of the EPC, cf. G 3/19, suffered a blow from the side of the EBA.
Even if the OP might not bring a change of the position expressed by a deciding body in its preliminary opinion, or might simply be considered useless as in the present case, it is not for the deciding body to decide ex cathedra that the OP are not to be held.
For example, if a party requires from a first instance division an OP in order to discuss the wording used in the minutes, if it is not satisfied by the latter, an OP has to be held, even if the decision cannot be appealed, cf. T 978/00, Reasons 6, penultimate §: the minutes are not part of the decision and hence not directly open to appeal.
J 1/22 reminds me of the decision of the CoA UPC that, as a matter of efficiency, certain decisions of the CoA UPC could be decided by a panel of three LQJ, in blatant contradiction with Art 9(1) UPCA. In its decision, the CoA UPC did not even bother to invoke the VCLT.
J 1/22 has been commented in the present blog.
Reasonable doubts are however permitted whether the OP to be held will improve the situation of the applicant.
It remains that if a party requests OP, the EPO has an non-reputable obligation to hold it.
Comments
2 replies on “R 16/23-Dynamic interpretation of the EPC and the necessity to holding OP”
A welcome decision. Remarkably, the applicant is a natural person and sole inventor. They deserve some commendation for not giving up.
Being rebuffed in this way by the EBA is not to the credit of the president of the legal board of appeal, even if the decision is a collegial decision. .