Thursday, 24 March 2011

T 1259/09 – No Party

The present appeal was filed against a decision of the Examining Division (ED) not to correct a decision for grant pursuant to R 140.

The mention of grant of the patent under consideration was published on May 30, 2007.

Three notices of opposition were filed. One of the notices of opposition was filed in common by Premium Aircraft Interiors Group Limited and Premium Aircraft Interiors UK Limited (hereinafter referred to as “Premium”).

With a letter dated November 5, 2008 Premium requested a correction of the decision to grant pursuant to R 140, by deleting GB from the list of designated Contracting States. In the heading of their letter, Premium was indicated as “opponent”.

With a brief communication dated February 23, 2009, the Opposition Division (OD) informed all parties to the opposition proceedings as follows:
“The request for correction of the decision to grant a European patent in respect of GB has been forwarded to the ED who had taken the decision. It will consider of its own motion, instigated by a letter from a third party, whether the decision should be corrected. Please note however that the EPO is bound by its decisions and that in decisions of the EPO only linguistic errors, errors of transcription and obvious mistakes may be corrected (R 140). No separate communication to the third party will be issued in this respect.”
On April 17, 2009 the OD posted further brief communications referring to the request for correction, stating, inter alia, that “the ED has noted that after examination of the designation of GB on the basis of the documents on file and their treatment in the course of examination proceedings it had come to the conclusion, that it was not necessary to correct the decision with regard to GB” and the reasons for this statement were set out in brief. The communication had no indication of the addressee and was signed by all three examiners of the ED.

On June 15, 2009 Premium filed a notice of appeal “against the decision communicated by the EPO with the communication dated April 17, 2009” and paid the appeal fee on the same day.

In what follows, the Board deals with the admissibility of this appeal.

[2] A 107 EPC 1973 determines the persons entitled to appeal and to be parties to appeal proceedings. Only parties involved in the first instance proceedings before the EPO have the right to file an appeal provided they were adversely affected by the decision of the department of first instance (A 107, first sentence EPC 1973).

[3] The appellants assert that the communication dated 17 April 2009 constituted an appealable decision of the ED on their request for correction and, therefore, they were a party to the first instance proceedings within the meaning of A 107, first sentence EPC 1973.

[4] It is undisputed in the present proceedings that the ED has the competence to correct its own decision to grant under R 140 EPC (identical with former R 89 EPC 1973) (see G 8/95), even in situations where opposition proceedings are pending (T 226/02, T 268/02 and T 79/07).

[5] The dispute at issue is whether the appellants, by filing their request for correction, initiated proceedings before the ED which were separate from the ex parte examination proceedings with the consequence that the appellants had become a party to the proceedings before the ED.

[6] In its decision G 8/95 [3.3-4] the Enlarged Board of Appeal (EBA) concluded that a party’s request for correction of the decision to grant concerns the grant of the patent and that therefore the decision on the correction must also concern the grant of the patent within the meaning of A 21(3)(a) EPC 1973, since it is the request of the party which defines the subject of the dispute.

With regard to the subject of the dispute in the second instance, the EBA ruled that the decisive criterion in A 21(3)(a) EPC 1973 is not that the decision under appeal is the decision to grant itself, but that it is sufficient for the decision to “concern” the grant and that this must necessarily be the case if the subject of the decision is the text in which the patent is to be or has been granted, since this is the result of the substantive examination and defines the rights conferred by the patent ([4]).

The EBA concluded that the technical boards of appeal as defined in A 21(3)(a) and (b) EPC 1973 have to decide on appeals from a decision of an ED refusing a request under R 89 EPC 1973 for correction of the decision to grant ([6]).

[7] From this reasoning of the EBA the present board draws the conclusion that a positive or negative decision of an ED on a correction of the grant decision under R 140 concerns the grant of a patent in examination proceedings. Thus proceedings concerning a correction of the grant decision are a continuation or extension of the examination proceedings and not new proceedings which are separate from examination proceedings.

This finding does not conflict with the appellants’ argument that R 140 belongs to Part VII of the EPC and does therefore not relate to the grant proceedings. The provisions in Part VII of the EPC and of the Implementing Regulations are rules common to all proceedings of the EPO and can therefore be applied in any proceedings provided for in the EPC. However, in the board’s view, these provisions cannot be the basis for any proceedings sui generis.

[8] Examination proceedings are as a rule ex parte proceedings which involve only the applicant(s). This can be derived from several EPC provisions.

A 60(3), for example, provides that the applicant is deemed to be entitled to exercise the right to a European patent in proceedings of the EPO. It is therefore the applicant who is entitled to file requests in grant proceedings before the EPO (see for example A 93(1)(b) (request for early publication), R 70(1) (request for examination) and R 71(4) (request for amendments)). It is also the applicant who receives the EPO communications regarding the European patent application (see for example R 55, 56(1), first sentence, and (2), second sentence, R 58, R 60, R 65, R 69(1), R 70(2) and A 94(3) together with R 71).

[9] The provisions of the EPC foresee a few exceptional situations where, apart from the applicant, a person other than the applicant (so-called “third party”) is involved as a party in proceedings prior to the grant of the patent, with the result that such proceedings are inter partes proceedings involving opposing parties. Such a situation arises for example in the event of requests for stay of proceedings (R 14) or requests for correction of the designation of the inventor (R 21(1)). In these provisions it is clearly indicated that a third party may file the respective request.

R 140 EPC, however, is silent on whether a third party may request the correction of a grant decision. Hence the general principles of third parties in examination proceedings apply.

According to A 115, first sentence, third parties may present observations concerning the patentability of the invention in respect of which the application has been filed. However, third parties filing observations are not party to the proceedings before the EPO (A 115, second sentence). From this it follows that, according to A 115, third parties are not entitled to file requests in examination proceedings. Therefore, if they file a request as a third party within the meaning of A 115, they cannot expect a communication or decision from the ED on their request. Third parties cannot become a party to the examination proceedings, simply by filing a request.

[10] In the present case, in the course of the opposition proceedings, the appellants, being one of the opponents, filed observations on the validity of the designation of the Contracting State GB and requested the correction of the grant decision, by deleting that designation.

This can also be derived from the heading of Premium’s letter dated 5 November 2008 where Premium is indicated as “opponent”. As to this, it is important to bear in mind that opposition is an independent procedure following the grant procedure and is not to be seen as a continuation or extension of the examination procedure (see decisions G 1/84 [9]; G 9/91 and G 10/91; and for example decision T 198/88).

Consequently, with respect to their observations and their request for correction, the appellants have to be considered as third parties in examination proceedings, since corrections of the grant decision concern the ex parte proceedings before the ED […]. Hence the board agrees with the respondent that the grant procedure could not become inter partes proceedings only because the appellants filed a request for correction.

[11] The appellants argue that they acquired party status in examination proceedings by the way the EPO departments of first instance handled their request dated 5 November 2008.

The board, however, cannot agree with the appellants.

[12] First of all, it is the board’s view that, when deciding how the actions of the first instance department are to be understood, all circumstances have to be taken into account and it has to be assessed how these actions have to be construed in good faith by a reasonable addressee taking part in proceedings with the EPO.

[13] In the present case the OD forwarded Premium’s letter dated 5 November 2008 to the ED. In its communication dated 23 February 2009, the OD informed not only Premium but all parties to the pending opposition proceedings about this. In the same communication, the OD made very clear that the ED would consider of its own motion, “instigated by a letter from a third party”, whether the grant decision was to be corrected under R 140 and that no separate communication would be issued to the third party. The board considers that from this communication it should have been clear to all parties to the opposition proceedings that the letter from the opponent Premium was treated as a letter of a third party as far as the issue of correction was concerned.

Moreover, the board notes that the appellants have not objected to the communication in first instance proceedings.

[14] Turning now to the communications of the OD dated 17 April 2009. The appellants argue that the communication notified to them constituted an appealable decision since not its form but its content was decisive.

It is indeed established jurisprudence of the Boards of Appeal that whether a document issued by the EPO constituted a decision or a communication depends on the substance of its content, not on its form or heading (see for example J 8/81; J 2/93; T 222/85, T 55/90). However, the criterion of substance has to be assessed in its procedural context (T 713/02 [2.1.4]).

[15] The communication dated 17 April 2009 which was notified to the appellants by the OD differs from that which was notified to the other parties on the same day. The only difference which can be found is that the wording of the subject of the communication sent to Premium refers to “your request for correction” instead of “request for correction”. The board considers that this difference is a logical consequence of the fact that the opponents Premium filed the request for correction in opposition proceedings.

As stated […] above, it was clear from the previous communication of the OD that Premium was considered as a third party with regard to its request for correction. Therefore, in its procedural context, the reference to “your request” could not be interpreted in such a way that the communication was a decision on the request. In the text of the communication reference was also made to the enclosed “communication” of the ED. The board cannot see how any recipient could draw the conclusion from this reference that a decision on the opponents’ request was enclosed. In the attached communication which was signed by all examiners of the ED there is no reference to any request. The communication does also not mention any addressee. What the text of the communication indicates is that the ED looked into the issue of the designation of the Contracting State and came to the conclusion that there was no need for a correction. It may well be that only because of the letter of the third party the ED came to this conclusion. In the board’s view it is the normal mechanism that third party’s observations can effect an action of the ED or even a decision. Even if the communication at issue was a decision under R 140 of the ED’s own motion, the appellants could not become party to the examination proceedings […].

Moreover the board considers that, with its communication, the ED envisaged to merely inform the OD that no correction of the grant decision would take place. This information was indeed helpful because the opposition proceedings could be continued on the basis of the patent as granted.

[16] The appellants submit that it did not matter which EPO department notified the communication of the ED to the third party. This argument cannot be successful in the present case. Premium as opponents in opposition proceedings filed a request for correction which was forwarded as the observations of a third party to the ED, being the competent department for a correction of the grant decision […]. This was also indicated in the first communication of the OD. From the communications dated 17 April 2009 it was clear that all opponents and the patentee were informed on the ED’s conclusion on the designation of the Contracting State GB in the grant decision. There is no indication that the OD forwarded a decision of the ED.

[17] Lastly, the board turns to the principle of good faith which is applicable pursuant to A 125 EPC 1973 in proceedings before the EPO.

The board is convinced that the appellants could not have legitimately expected a decision from the ED on their request for correction since it was indicated from the outset that they were treated as a third party in this respect. Moreover the appellants did not object to the treatment as a third party at any stage of the first instance proceedings.

[18] In view of the above, the board agrees with the respondent and believes that, irrespective of whether the ED took an appealable decision within the meaning of A 106, the appellants were not a party to the proceedings before the ED and thus not entitled to file an appeal in accordance with A 107, first sentence EPC 1973.

Hence the appeal must be rejected as inadmissible in accordance with R 65(1) EPC 1973.

The whole decision can be found here.

To have a look at the file wrapper, click here.