Saturday, 13 March 2010

G 1/07 – Administrators Going Ultra Vires?


There is one last point of G 1/07 which I wanted to mention. As it is of rather academic interest, I have kept it for the weekend.

The Enlarged Board (EBA) offers a look into the cuisine behind the revision of the EPC. As a matter of fact, the EPC 2000 as it entered into force in December 2007 was not a pure product of the Diplomatic Conference held in 2000. The Conference empowered the Administrative Council (AC) to amend the Convention in order to harmonize the three language versions. The AC has abundantly made use of this power. Of course, there are some legal risks associated.

The present referral was made before the entry into force of EPC 2000. According to Article 7(1) of the Act revising the EPC of 5 October 1973, last revised on 17 December 1991, the “revised version of the Convention shall apply to al1 European patent applications filed after its entry into force .... It shall not apply to ... European patent applications pending at that time, unless otherwise decided by the AC of the European Patent Organisation”. Since A 112 is not mentioned in Article 1 of the decision of the AC of 28 June 2001 on the transitional provisions under Article 7 as a provision which would thereby apply to European patent applications pending at the time of entry into force of the revised EPC, A 112 EPC 1973 continues to apply to European patent applications pending upon entry into force of the revised Convention. Hence, the admissibility of the present referral is to be determined on the basis of A 112 EPC 1973.

This is also justified for reasons of legal certainty, which require that it be possible to determine the admissibility of a procedural act at the point in time when it is performed. This includes that it is the law applicable at that time which should apply (see also J 10/07 [1], T 1366/04 [1.2])

A 112, although not having been amended in the revision process, was amended later by the AC, making use of the power entrusted to it under Article 3(1) of the Act revising the EPC to draw up a new text of the EPC, in which the wording of the provisions of the Convention shall be aligned, if necessary, in the three official languages.

Article 3(1) : The AC of the European Patent Organisation is hereby authorised to draw up, at the proposal of the President of the EPO, a new text of the EPC. In the new text, the wording of the provisions of the Convention shall be aligned, where necessary, in the three official languages. The provisions of the Convention may also be renumbered consecutively and the references to other provisions of the Convention may be amended in accordance with the new numbering.

As regards A 112, this “alignment” has resulted in the English version of A 112(1) having been amended from reading “if an important point of law arises” to “if a point of law of fundamental importance arises”.

It does not appear a priori evident that this “alignment” of the English text is not associated with any change in the overall meaning to be given to A 112(1), even when taking into account the equally authentic French and German texts of that Article, in accordance with A 177(1) EPC 1973.

Hence, it cannot be said to be totally irrelevant from the outset whether the old or the new version of A 112 applies. Therefore the Enlarged Board will examine the admissibility of the present referral on the basis of A 112 EPC 1973. [1.1]

When first reading this paragraph, I had the impression that the EBA felt uneasy about the amendment of A 112 by the AC. Others have had the same impression, as can be seen from an anonymous comment to an IPKat post on G 1/07.

Having had a closer look, I do not find the “alignment” of the text open to criticism. As far as the first sentence of A 112(1) is concerned, both the French and the German text of the EPC have remained unamended:

Afin d’assurer une application uniforme du droit ou si une question de droit d’importance fondamentale se pose …

Zur Sicherung einer einheitlichen Rechtsanwendung oder wenn sich eine Rechtsfrage von grundsätzlicher Bedeutung stellt, …

Only the English text has been aligned:

In order to ensure uniform application of the law, or if an important point of law arises …

has become:

In order to ensure uniform application of the law, or if a point of law of fundamental importance arises …

It is obvious that the new text is now well aligned with the French and German versions, which was the purpose of the power entrusted to the AC. Therefore I would say that the AC has not gone too far. But perhaps the EBA did not even wish to suggest that it has.

Be that as it may, this raises an interesting (but admittedly academic) question: what could be done if the AC had gone ultra vires and changed the meaning of an EPC provision and a user of the EPO felt adversely affected by the amendment? As far as I can see, there is no legal remedy available. Only a Diplomatic Conference could repair the damage done, by amending the provision once more.

To download the decision, just click here.

2 comments:

Anonymous said...

I made the anonymous comment to the IPKat post. After comparing with the German and French language versions of Art. 112 EPC 1973, I agree that the "alignment" cannot really be criticised.

If the AC had acted ultra vires, I suppose a Board of Appeal could (and probably should, i.e. both on request and of its own motion) declare so whenever the legality of the AC's decision would affect the outcome of an appeal (or refer such a question to the EBA, which is probably what would happen in practice).

If the AC had acted ultra vires, its decision would probably be (partially) void ab initio. That would mean the text of the EPC provision in question was never amended (at least not by the AC, it might have been amended by the Diplomatic Conference).

If I'm correct, then a legal remedy does not exist, but is (theoretically) not necessary either. Affected users should simply argue before the EPO that the amendment is void, so that the old version of the provision should be applied. Of course, the lower instances of the EPO are unlikely to agree. Their incorrect application of the EPC can be appealed in the normal way.

Decision G 5/88 might be regarded as an example of what would happen. Although that decision concerned a decision by the President, I would think the same principle applies to a decision by the AC. G 5/88 seems to confirm that the illegal decision is void (in so far as it was taken ultra vires), but also explains that the principle of good faith and the protection of legitimate expectations play a role.

Oliver G. Randl said...

Thanks for your interesting comment!