The Enlarged Board of appeal (EBA) has spoken again!
Interlocutory decision J 2/08 had referred the following point of law to the EBA:
“Is an application which has been refused by a decision of the Examining Division (ED) thereafter still pending within the meaning of R 25 EPC 1973 (R 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?”
Here is what the EBA had to say:
Rules of interpretation
[3.1] It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary in view of the referred question.
It is the established jurisprudence of the EBA to apply, for the interpretation of the EPC, the rules for interpretation laid down in the Vienna Convention on the Law of Treaties (VCLT) (see e.g. G 5/83 [2-5]; G 1/07 [3.1]; G 2/08 ). According to the general rule of interpretation of Article 31(1) VCLT
“a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose”.
According to Article 32 VCLT
“recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty ( . . . ) , in order to confirm the meaning resulting from the application of Article 31 VCLT, or to determine the meaning when the interpretation according to Article 31: (a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable”.
Thus, before considering the legislative history of Rule 25 EPC 1973, in particular document CA/127/01, the meaning of the expression ‘pending European patent application’ is to be determined based on the general rule of interpretation enshrined in Article 31 VCLT.
‘Pending European patent application’
[3.2.1] In the legal system of the EPC a European patent application involves two aspects. On the one hand, it is an object of property (A 71 EPC 1973 ff.) deriving from the right of the inventor to a European patent (A 60(1) EPC 1973) and conferring on its proprietor, inter alia, provisional protection under A 67 EPC 1973. On the other hand, in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973). The term ‘European patent application’ may therefore stand for substantive rights as well as for procedural rights of the applicant.
[3.2.2] Concerning the term ‘pending’ (‘anhängig’, ‘en instance’), it is to be noted that the EPC does not use this term in a uniform manner. It is not only used in connection with pending patent applications (R 25(1) and A 175(2) EPC 1973), but also in connection with proceedings pending before the EPO (see e.g. R 13(3) EPC 1973 and A 175(3) EPC 1973). The meaning of ‘pending’ is not the same in these contexts. If e.g. proceedings are no longer pending before the EPO because they have been stayed according to R 13 (1) EPC 1973, the patent application remains nevertheless, by definition, pending as it cannot be withdrawn during suspension. On the other hand, opposition proceedings before the EPO can only be made pending after grant of the patent, i.e. when the patent application is no longer pending.
It is to be emphasised in this connection that R 25 EPC 1973 refers to “any pending patent application” rather than to proceedings pending before the EPO. It is thus not relevant for Rule 25 EPC 1973 whether or not proceedings are pending before the EPO.
[3.2.3] R 25 EPC 1973 implementing A 76 EPC 1973 has been amended several times. In the version according to the decision of the Administrative Council (AC) of 10 June 1988 it contained, for the first time, the explicit requirement of a pending earlier application. It read:
“Up to the approval of the text, in accordance with Rule 51, paragraph 4, in which the European patent is to be granted, the applicant may file a divisional application on the pending earlier European patent application.”
Whereas the deadline set by the approval of the text is clearly a procedural provision (G 10/92 ), the requirement of a pending earlier patent application is of a different nature. It rather reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time the divisional application is filed (see G 1/05 [11.2]).
By the decision of the AC of 18 October 2001, the procedural deadline of the approval of the text was removed from R 25 EPC 1973 and only the substantive requirement of a pending application remained in the version to be applied to the present case.
[3.2.4] As follows from the above observations, a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.
This interpretation conforms with the view of the Legal Board of Appeal in decision J 18/04 according to which the term “pending … patent application” in R 25 EPC 1973 does not establish a time limit, but rather a substantive requirement (J 18/04 [7 ff.]).
[3.2.5] Clearly, the pending status of an earlier European patent application does not mean that a divisional application relating to it can always be filed. This may be excluded by procedural provisions, such as e.g. R 13 EPC 1973, which prevents, as lex specialis, the filing of a divisional application, if the proceedings for the pending earlier application are stayed (J 20/05 ). Similarly, Article 23(1) PCT, which provides that no designated Office shall process or examine the international application prior to the expiration of the time limit under Article 22 PCT takes precedence, in accordance with A 150(2) EPC 1973, over R 25 EPC 1973 and thus prevents the filing of divisional applications relating to pending Euro-PCT applications before they are processed by the EPO acting as a designated or elected Office. Finally, R 36 as presently in force sets certain procedural time limits for filing divisional applications during the examination procedure.
Existence of substantive rights deriving from European patent applications
[4.1] The above interpretation of the legal term ‘pending European patent application’ […] leads to the further question of until when are substantive rights deriving from European patent applications in existence. For answering this question a distinction has to be made between the refusa1 of the application and the grant of a patent.
Refusal of the application
[4.2.1] The substantive rights of an applicant include provisional protection, pursuant to A 67 EPC 1973, conferred by the European patent application after publication […]. A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or “finally refused” (German version: “rechtskräftig zurückgewiesen” - French version: “rejetée en vertu d’une décision passée en force de chose jugée”).
Substantive rights of the applicant under A 67 EPC 1973 may therefore continue to exist after refusa1 of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.
[4.2.2] As the Legal Board of Appeal observed in point  of the referral decision J 2/08, it is “accepted that the final (res iudicata) character of a first-instance decision (Rechtskraft) will only ensue upon expiry of the time limit for filing an appeal”.
This concept is indeed well-established in the Contracting States. Reference is made, for example, to the Code of Civil Procedure of Germany (§ 705, Zivilprozessordnung), of France (Article 500, Code de Procédure Civile) and of Austria (§ 411, Zivilprozessordnung); for Switzerland reference is made to Vogel/Spühler, Grundriss des Zivilprozessrechts, 8. Auflage 2006, § 40, No. 62.
These national provisions in essence provide that decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress. There is no reason to deviate from this generally accepted principle in the context of A 67 (4) EPC 1973 (see also Schennen in Singer/Stauder, “Europaisches Patentübereinkommen”, 5th edition 2010, Article 67, marginal number 25).
[4.2.3] The legal consequences of A 67(4) EPC 1973 referred to above are independent of the suspensive effect of a possible appeal, nor do they depend on the point in time when the decision to refuse of the first instance becomes effective within the meaning of decision G 12/91 . A 67(4) rather is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end. The retroactive effect of a final decision to refuse on the rights conferred upon the applicant under A 67 EPC 1973 does not influence the pending status of the application before such a decision is final.
[4.2.4] From the above the EBA concludes that under the EPC a patent application which has been refused by the ED is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.
The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version.
[4.2.5] The interpretation given above does not contradict preparatory document CA/127/01 drawn up in view of the amendment of R 25 EPC 1973 by the decision of the AC of 18 October 2001 and referred to by both the appellant and the President of the EPO. Point 6 of this document deals with the question of how long “grant proceedings” are pending . However, as mentioned above, pending proceedings cannot simply be equated with a pending application. Moreover, as the President correctly pointed out, document CA/127/01 mainly deals with the pending status of an application in the case of grant. Nevertheless, concerning refusal, it is stated in point 6 that “grant proceedings are pending […] until the date that an application is finally refused […].” There is no reason to assume that the authors of this document intended to give the term ‘finally refused’ (rechtskräftig zurückgewiesen - définitivement rejetée) any meaning other than its ordinary and generally accepted meaning[…].
[4.2.6] In any case, the interpretation of R 25(1) EPC 1973 given here complies with the purpose, indicated in document CA/127/01, of making the final date for filing a divisional application more transparent for the applicant and for third parties. According to the existing practice of the EPO under R 25(1) EPC 1973, an application ceases to be pending on notification of the decision to refuse in written proceedings or on the pronouncement of the decision in oral proceedings, as the case may be. In contrast, on the interpretation adopted by the EBA, the application in both cases is pending until the expiry of the period for filing an appeal and is no longer pending on the day after, if no appeal is filed. This can always be determined from the notification of the first-instance (written) decision (A 108 EPC 1973), a fact which may help to prevent unexpected legal consequences of decisions to refuse and to avoid the need for appeals filed for the sole purpose of making a refused application “pending again”.
Grant of a patent (obiter dictum)
[4.3.1] The President of the EPO also commented on the question of until when is a European patent application pending within the meaning of R 25(1) EPC 1973 in the case of grant. The President referred to the established practice of the EPO according to which, based on A 97(4) EPC 1973, the application is deemed to be still pending during the period between the decision to grant the patent and the publication of the mention of grant .
[4.3.2] It may be noted that the view of the President referred to above is not in contradiction with the EBA’s interpretation of R 25(1) EPC 1973 according to which a European patent application is pending as long as substantive rights deriving therefrom under the EPC are in existence […].
For the case of grant, A 64(1) EPC 1973 provides that, from the date of publication of the mention of the grant, it is no longer the patent application but the granted patent which confers on its proprietor the same rights as would be conferred by a national patent granted in that State. Article 64(1) EPC 1973 is in conformity with Article 97(4) EPC 1973 according to which the decision to grant shall not take effect until the date of publication of the mention of the grant. Thus, in the case of a decision to grant, the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent.
[4.3.3] The President of the EPO further addressed the issue of whether the filing of a divisional application would be allowed irrespective of an (obviously) inadmissible appeal being filed with regard to the parent application.
As a consequence of the interpretation of R 25 EPC 1973 set out above, if no appeal has been filed, the deadline for filing a divisional application is either the date of expiry of the time limit for filing a notice of appeal or the day before the date of publication of the mention of the grant, depending respectively on whether a decision to refuse or a decision to grant has been issued. In neither of these situations is the filing of an appeal necessary to ensure pendency of the application.
The further issue addressed by the President however concerns divisional applications filed after the respective deadline for the case where an (obviously) inadmissible appeal has been filed in order to maintain pendency of the application past the deadline. The point of law referred to the EBA however only concerns the case in which no appeal is filed.
The further issue addressed by the President is therefore not covered by the referral decision and requires no answer in this decision.
For these reasons, the question of law which was referred to the EBA is answered as follows:
In the case where no appeal is filed, a European patent application which has been refused by a decision of the ED is thereafter pending within the meaning of R 25 EPC 1973 (R 36(1)) until the expiry of the time limit for filing a notice of appeal.
In my opinion, the present decision shows the EBA at its best: the decision is well reasoned, concise, to the point (quite unlike the IPKat, I did not spot “much pontification”) and provides a simple, practical solution to a delicate problem. A job well done, I would say.
Given the new R 36 time limits, the decision is likely not to have a great impact, but I definitely would consider it to be a must-read for people intending to tackle EQE paper D during the years to come.
The whole decision can be downloaded from Register Plus.