Saturday, 17 July 2010

T 1226/07 – Too Late For Not Being Premature

Those who have been following EPC case law for some time will remember decision T 1181/04 where an appeal filed against a communication under R 51(4) EPC 1973 succeeded. The present decision reminds us that this was very exceptional and that by now, as a general rule, such appeals will be found premature and thus inadmissible.

[1.1] R 51 EPC 1973 implements the examination procedure established under A 96 and 97 EPC 1973. In particular, R 51(4) stipulates that the examining division (ED) has to communicate to the applicant the text in which it intends to grant the patent and invite him to pay the fees and file the translation. According to the last sentence of this provision, the payment of the fees and the filing of the translation is considered to be implicit approval of the text proposed by the examining division.

The function of a communication under R 51(4) is therefore to establish whether the applicant approves the proposed text of the patent as foreseen in A 97(2)(a) and A 113(2) EPC 1973. If, after receiving the communication under R 51(4), the applicant approves the version of the patent proposed by the ED and fulfils the formal requirements for grant, the ED issues a decision to grant according to A 97(2). If the applicant does not approve the text, the application is to be refused according to A 97(1), since the EPC does not provide any other sanction in this case.

The way in which R 51(4) and A 97(1) and (2) operate indicates that a communication under R 51(4) is not intended to terminate the examination procedure but is rather a preparatory action and is therefore as such not appealable. An appeal against a communication under R 51(4) is therefore normally to be considered inadmissible (see T 1181/04 [3-6]).

[1.2] In case the communication under R 51(4) refers to an auxiliary request and, in an annex, the reasons why the main request or a higher ranking auxiliary request does not fulfil the provisions of the EPC are set out, the boards of appeal have acknowledged admissibility of an appeal, when EPO form 2004 07.02CSX was used (see decisions of the boards of appeal T 1181/04 and T 560/05). The reasons were that in this form, the EPO removed from the appellant the possibility of influencing the procedure and obtaining a decision on the refusal of his higher ranking requests and of filing an appeal against it (see T 1181/04 [§ 2, first sentence]).

[1.3] In the current case, however, decision T 1181/04 was already more than two years old and thus deemed to be known, and EPO form 2004 01.06CSX was used which advised the applicant “If this communication is based upon an auxiliary request, and you reply within the time limit set that you maintain the main or a higher ranking request that is not allowable, the application will be refused (A 97(1), see also Legal Advice 15/05 (rev. 02), OJ EPO 6/2005, 357)”. Further it was set out that in other cases, except those of this cited paragraph and one other paragraph, if the relevant fees were not paid or the translation not filed in due time, the European patent application would be deemed to be withdrawn (emphasis added by the board).

Thus, in the case in suit the provisions covering exceptional admissibility of an appeal as reply to a communication under R 51(4) are not fulfilled. In addition, the applicant has not raised any objection to the board’s interpretation of events. Therefore, the board comes to the conclusion that the appeal is not admissible but rather premature.

To read the whole decision, click here.