J 1/10 - Desynchronize

An application was filed on 17 December 2008. No priority was claimed. In a communication dated 29 January 2009, the Receiving Section informed the appellant that the designation of the inventor was missing from the request for grant. It invited him to remedy that deficiency within the prescribed time limit (R 60(1)).

After having been sent the extended European search report, the appellant requested (by letter dated 27 July 2009) that the application be published as soon as possible under A 93(1)(b).

On 19 August 2009 the Receiving Section (RS) informed the appellant that the application would be published on 16 September 2009. Since the designation of the inventor had not been filed, on 13 October 2009 the RS issued a decision refusing the application on the grounds that the prescribed time limit had not been observed. In two telephone conversations, the appellant was informed on 23 October 2009 that “... a request for early publication .... means that before starting the technical preparations for publication the applicant should have filed the designation of inventor. Thus the 16-month time limit ceases to exist ...”, and that “.... R 60 was interpreted in a way that the designation of inventor would have to be filed in any case before the termination of the technical preparations for publication, since it was clear that the designation of inventor is considered part of the application.”

The applicant then filed an appeal. Here is what the Legal Board had to say:

[2.1] A 81 stipulates that European patent applications must designate the inventor. This must be done in the request for grant or a separate document (R 19(1)). Failure to file the designation of the inventor together with the European patent application is a deficiency which may be rectified within 16 months of the filing or priority date, this period being deemed to have been observed if the designation of the inventor is filed before completion of the technical preparations for publication, R 60(1)). The RS advises the applicant of the deficiency (A 90(3) and (4)).

The 16-month period is thus a time limit for performing a specific action, i.e. in this case for the applicant to rectify the deficiency brought to his attention. If he fails to do so before completion of the technical preparations for publication, the application must be refused pursuant to A 90(5).

[2.2] The R 60(1) time limit was set at 16 months (or before completion of the technical preparations for publication of the application if later) to enable the applicant to provide the information about the designated inventor in the European patent application as published; under A 93(1)(b) publication occurs at 18 months as from the filing date. R 20(1) duly provides that the designated inventor must be mentioned in the published application. The reason for that is that this information needs to be available to the public as well as the EPO. It is therefore entered in the European Patent Register (A 127, Rule 143(1)(g)) and also published in the European Patent Bulletin (A 129(a)).

[2.3] Under R 60(1), the 16-month period is deemed to have been observed if the information is communicated before completion of the technical preparations for publication of the European patent application. That extra clause is a “quasi-extension” of the period; it does not change its nature, i.e. that of a time limit for performing a specific action. If the designation of the inventor is filed after the 16-month period but still before completion of the technical preparations for publication, the time limit is deemed to have been observed. This extra clause was included in R 60(1) EPC as part of the 2006 revision of the Implementing Regulations without any detailed explanations, as it was modelled on several PCT provisions (see CA/PL 17/06, pages 186 and 187, and the minutes of the 30th meeting of the Committee on Patent Law, CA/PL PV 30, page 18). It enables the information about the inventor to be included in the European patent application as published, because publication occurs slightly later (18 months after filing), and the fiction that the 16-month period has been observed means that no decision refusing the application can then be issued.

[2.4] In the present case, no priority was claimed, so the 16-month time limit expired on 19 April 2010 (Monday) (filing date: 17 September 2008; expiry of the 16-month time limit: 17 April 2010, Saturday, extended under Rule 134(1) EPC to Monday, 19 April 2010). The communication under R 60(1) is dated 29 January 2009 and was sent by registered mail. The statement of the grounds for appeal indicates that the communication was validly notified.

The appellant filed the designation of inventor on 2 December 2009, i.e. well before the end of the 16-month period.

[3.1] The issue arising in this case is whether the legal position regarding designation of the inventor is changed by early publication of the European patent application at the applicant’s request under A 93(1)(b), which can mean that the European patent application as published does not tell the public who the inventor is.

In the board’s judgement, early publication under A 93(1)(b) has no effect on the provisions governing designation of the inventor. If it did, it would be to shorten the 16-month period for filing the designation of the inventor. But there is no legal basis for assuming any connection between early publication and a reduction in the 16-month period. Nor can this be inferred from R 60(1) or the provisions governing the procedure for rectifying deficiencies (A 90(3) and (4)).

[3.2] Also, the board can see no reason why the provisions concerning publication of the European patent application (A 93(1) and R 20(1)) should take precedence over those governing filing of the designation of inventor.

It is desirable – and was indeed the legislator’s intention – that the application when published should contain the information about the inventor. The periods for publication and for filing the designation of inventor (18 and 16 months respectively) are therefore synchronised and run in parallel.

But the public can also be informed after publication as to who the inventor is, in the form of - for example - announcements in the European Patent Register (A 127, R 143(1)(g) and the European Patent Bulletin (A 129(a)). Therefore, the information about the designated inventor would be available to the public in the sense intended by the legislator.

[3.3] Another potential scenario in which the application cannot be refused is that for some reason the RS issues the communication under R 60(1) EPC only shortly before or indeed after the 16-month period expires, and it is thus despatched or notified after the application’s publication under A 93(1)(a). Notification of this communication is the sole condition triggering a loss of rights and possibly a decision refusing the application. Hence, from a legal point of view, the already published application is of no significance as regards the missing designation of inventor.

[3.4] For the reasons outlined above, the appeal is to be allowed. The decision under appeal is wrong in its interpretation that the 16-month time limit for filing the designation of the inventor is shortened if the European patent application is published early.

Reimbursement of the appeal fee

[4.1] Reimbursement of the appeal fee is ordered where a board of appeal deems an appeal to be allowable and reimbursement is equitable by reason of a substantive procedural violation (R 103(1)(a)).

[4.2] According to A 113(1), EPO decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This provision is a guarantor for the parties that proceedings before the EPO will be conducted openly and fairly (cf. J 20/85 [4(a)] and J 3/90). The right to be heard is intended to ensure that the parties to proceedings are not taken by surprise by grounds mentioned in a decision adversely affecting them (cf. e.g. decisions T 669/90 and T 892/92).

[4.3] The reasons for refusing the application under A 90(5) were not put to the appellant first, to enable him to comment on them. Nor does the decision itself give him the reasons why he was considered not to have observed the 16-month period for filing the designation of the inventor. Quite the contrary: the appellant was informed of them only after notification of the decision and after he telephoned the RS to ask about it. Accordingly, the decision under appeal is based on grounds on which the appellant did not have the opportunity to present comments; it thus contravenes the requirements of A 113(1). Therefore, a substantial procedural violation occurred in the first-instance proceedings.

[4.4] Since the decision of the first instance contravenes A 113(1) and the appeal is allowed, it is equitable to reimburse the appeal fee pursuant to R 103(1)(a).

If you wish to download the whole decision, you can do so here.