T 1349/08 – No Partying Here

The recent referral to the Enlarged Board of appeal (EBA) pending as G 1/10 has drawn some attention to the difficulties that may arise when the Examining Division (ED) acts under R 140 during opposition proceedings. The present decision is an interesting complement because it shows an opponent desperately trying to reverse a decision of the ED taken during the opposition period.

The decision to grant the opposed patent was published in the Bulletin on March 20, 2002. A decision to correct the decision to grant under R 89 EPC 1973 was taken on July 5, 2002. The decision to correct was not published in the Register. The patent was then opposed on December 20, 2002. In a letter to the ED, the opponent requested that the original decision to grant the patent be reinstated. The ED issued a ‘decision’ dated May 20, 2008, holding that the opponent, not being a party to the examining proceedings, was not entitled to request reinstatement of the first decision to grant. The present appeal is directed against this decision.

Party status of [the opponent]

[2.1] The ED, in a decision dated 5 July 2002, corrected the decision to grant a European patent issued on 7 February 2002 pursuant to R 89 EPC 1973. On a request of the [opponent], the ED, in a “decision” dated 20 May 2008, decided that the [opponent] was not a party to examination proceedings and was thus not entitled to request reinstatement of the original decision to grant and all its requests were thus rejected as inadmissible.

[2.2] The object underlying this dispute is the request of the [opponent] to the ED to cancel its decision to correct the decision to grant and to reinstate its original decision to grant. Thus the present dispute lies within the framework of examination proceedings, the [opponent’s] request being directed to the ED and the “decision” under appeal dated 20 May 2008 being issued by the ED. The question arises, whether the [opponent], being neither the applicant nor the patentee, could nevertheless become a party to the examination proceedings.

[2.3] The correction of the decision to grant a European patent as well as the decision refusing the [opponent’s] request to withdraw said decision to correct and to reinstate the original decision to grant underlying the present dispute belongs to the examination proceedings pertaining to said European patent and have been taken by the competent ED. Examination proceedings are ex parte proceedings between the EPO and the applicant/patentee (see A 60(3) and A 94(3)). Analogous to A 115, which stipulates that a person submitting observations concerning the patentability of an invention shall not be party to the proceedings before the EPO, a person contesting the allowability of a correction of a decision to grant a European patent under R 140 EPC 2000 and requesting reinstatement of the original decision to grant, cannot thereby become a party to the proceedings. The [opponent], being neither the applicant nor the patentee, thus cannot be party to the examination proceedings. Therefore the [opponent], not being party to the examination proceedings, has no party status in the present examination proceedings. This was the conclusion of the ED in its “decision” of 20 May 2008 and the Board shares this view. Consequently, irrespective of whether or not the [opponent] is adversely affected by said “decision”, it cannot acquire the quality of party status to the examination proceedings.

[2.4] Therefore, the appeal is to be dismissed.

[2.5] For the following reasons, the Board is not convinced by the [opponent’s] submissions as to why it should indeed be regarded as a party to the examination proceedings.

[2.5.1] The [opponent] submitted that it was at least a party to the opposition proceedings concerning the patent in suit, that these opposition proceedings were affected by the “decision” of the ED dated 20 May 2008 not to reinstate the decision to grant dated 7 February 2002, and the [opponent] was adversely affected thereby in these opposition proceedings. However, the party status of an opponent in opposition proceedings cannot be transferred to examination proceedings, opposition proceedings and examination proceedings being separate proceedings (see T 198/88 [2.1]). Whether the opposition proceedings are affected or not by a decision issued in the course of examination proceedings is irrelevant to the matter of whether the [opponent], who is opponent in opposition proceedings, may acquire party status in the examination proceedings in view of the separate nature of these proceedings. The submission that the [opponent] might be adversely affected by the “decision” of the ED dated 20 May 2008 may give the [opponent] an interest to act, but is irrelevant to the legal question of party status, an interest to act not in itself conferring party status in proceedings to which the [opponent] was not a party.

[2.5.2] The [opponent] further argued that in the particular circumstances of this case it was indeed party to the examination proceedings because the Opposition Division (OD), by virtue of its decision of 17 September 2004 cancelling the date for oral proceedings already fixed and indicating that a new date would be fixed after the requested decision of the ED had become final, had thereby recognised that the ED should address the [opponent’s] request for an appealable decision by the ED regarding the decision to correct the decision to grant dated 5 July 2002, the [opponent] hereby acquiring party status. However, irrespective of whether or not the communication of the OD dated 17 September 2004 bore all the characteristics necessary for qualifying as a decision and, thus, could in fact constitute a decision, and whether or not the OD indeed had the power to refer the case back to the ED, examination proceedings are ex parte proceedings (see point [2.3] above) which are separate from opposition proceedings (see point [2.5.1] above) which by nature are inter partes proceedings. As such, no action of the OD could confer party status to an opponent in examination proceedings on the same case, it indeed being questionable whether or not opposition and examination proceedings may coexist for the same application/patent.

[2.5.3] The [opponent] further submitted that correction of a decision to grant a European patent did not form part of the examination proceedings but was an isolated procedural measure, citing J 27/96 [3.2] in this respect, thus the [opponent] was entitled to be party to this isolated procedural measure. However, decision J 27/96 is concerned with R 88 EPC 1973 (R 139 EPC 2000), which applies to corrections of errors in documents filed before the EPO, whereas the [opponent] is objecting to a decision concerning a correction under R 140 EPC 2000 (R 89 EPC 1973), which applies to decisions of deciding bodies of the EPO. In any case, the [opponent] cannot be party to an isolated procedural measure, but only to proceedings as a whole, the decision J 27/96 merely stating that the applicant which requested a correction of a mistake in documents was not thereby reinstated in a particular procedural phase which would thereby have made said whole procedural phase available to him again. Thus, the decision J 27/96 is not relevant to the present case, the correction of a decision to grant a European patent being within the scope of examination proceedings.

[2.5.4] The [opponent] cited A 125, stating that if the EPO were to take into account the principles of procedural law generally recognised in the Contracting States, the [opponent] would become a party to the examination proceedings. However, the Board notes that A 125 provides for taking such principles into account only in the absence of procedural provisions in the EPC. This Article thus does not refer to the absence of a procedure but only to the absence of procedural provisions. Since there is no procedure in the EPC for creating party status for a third party in examination proceedings, indeed on the contrary, it is specifically provided for in A 115 that a third party shall not be party to the proceedings before the EPO (see point [2.3] above), there can be no absence of procedural provisions. In any case, the [opponent] did not substantiate its argument and did not provide corroborating evidence that in the majority of, or in any particular Contracting States, there existed some modus for creating party status for a third party in examination proceedings on patent applications. Thus regardless of whether procedural provisions are absent in the EPC, the absence of such provisions being a prerequisite for the application of A 125, the Board concludes that in the absence of any evidence of relevant procedural principles from the Contracting States, said Article cannot serve as a basis for creating a special legal remedy making it possible for a third party to attain party status in examination proceedings (see G 1/97 [3]).

[2.5.5] The [opponent] submitted that its legitimate expectations had not been protected, the published text of the patent it had opposed, namely European patent No. 952 132, having been amended post-grant in an unallowable manner, the [opponent] being adversely affected thereby as it was now prevented from challenging the post-grant amendment in opposition proceedings under A 123(3). However, any legitimate expectations the [opponent] may have resulting from the publication of the decision to grant of European patent No. 952 132 may be relevant only to the opposition proceedings pending on this case (see point [5.3] below) to which the [opponent] would appear to be a party, namely in its quality as opponent. Regardless of whether or not the [opponent] has any legitimate expectations in the examination proceedings, legitimate expectations are not in themselves a ground for generating party status to the present examination proceedings, just as they would not be for any other member of the public, which may also have legitimate expectations in examination proceedings.

[3] Since the [opponent] has no party status in these examination proceedings, the appeal is not allowable, party status being a prerequisite for the Board to allow any of the [opponent’s] main, first and second auxiliary requests.

Referral to the EBA

[4.1] According to A 112(1)(a), a referral to the EBA is only admissible if a decision is required in order to ensure uniform application of the law or if an important point of law arises. The answer to the referred question should not be merely of theoretical or general interest, but has to be decisive, i.e. essential, to reach a decision on the appeal in question (see, for example, G 3/98 [1.2.3]).

[4.2] The question put forward by the [opponent] concerns the issue of whether an opponent could be an adversely affected party to proceedings relating to correction of a decision to grant under R 140 EPC 2000 (or R 89 EPC 1973). Since, however, the decision for correction itself dated 5 July 2002 is not the decision under appeal in the present proceedings, but rather the “decision” of 20 May 2008 concerning the reinstatement of the original decision to grant, the answer to the proposed question cannot be decisive in the present case.

[4.3] The issue addressed in the proposed question thus being merely of theoretical nature, any answer of the EBA to that question is irrelevant for deciding on the present appeal, and hence the request for referral of the question must be refused.

[5] The following comments of the Board do not form part of the ratio decidendi of this decision. However, in view of the unusual nature of this case, inter alia the following points may need attention when the opposition proceedings pending on this case resume.

[5.1] Under A 99(1) and A 101(1), the OD shall examine whether or not at least one ground for opposition prejudices the maintenance of the European patent. Thus the OD should identify the subject-matter of the patent which forms the basis of the opposition proceedings in order to determine the object of the legal dispute, this being the competence and duty of every deciding body.

[5.2] Thus it appears that the subject-matter of the opposed patent should be determined. This is usually the subject-matter as defined in the published granted patent. If, as in the present case, an amendment has been carried out after mention of grant of the European patent in the Bulletin, then the deciding body, in this case the OD, may need to decide whether or not this amendment may further define the subject-matter of the opposed patent to be decided upon in opposition proceedings under A 101. 

[5.3] When deciding on whether the amendment should be taken into account, the OD may need to consider whether or not the amendment carried out after publication of the decision to grant in the Bulletin (see A 97(4)) has any effect, particularly in view of any “cut-off” effect of said publication (see T 777/97 [3, last paragraph] and J 42/92 [5,6]) due to the jurisdiction passing to the Contracting States from this date (see A 64(1)).

The question thus may arise whether or not the ED had the competence to act after this date due to an exhaustion of its competence ratione materiae as well as ratione legis. Furthermore, the interests of the public in respect of legal certainty may also have to be taken into account (see G 1/97 [3(c)] and T 713/02 [2.2.6]), the date of publication of the decision to grant in the Bulletin being the starting date for the nine month period in which opposition may be filed (A 99(1)).

[5.4] If an amendment has been allegedly carried out under R 140 EPC 2000, the OD may need to determine whether or not said amendment was in fact a genuine correction under R 140 (see T 1093/05 [7] and T 850/95 [headnote I]). The OD may indeed not have the right to verify the substance of a correction under R 140 (see T 79/07 [3 to 23]), but, in view of the discretionary nature of the decision to correct, it may have the competence and duty to verify whether the proper criteria were applied in determining whether the correction made did indeed qualify as a correction pursuant to R 140, or whether the use of R 140 as a legal basis was unjustified, e.g. the ED, under R 140, had in fact reopened examination proceedings.

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