Tuesday, 12 April 2011

T 1495/09 – No Panacea

In the present decision the Board had to deal with requests filed by two of the opponents (Premium and Cathay) to correct the decision to grant by deleting the designation of GB.

[7] Premium and Cathay requested the Board to correct the decision to grant under R 140 by deleting the designation of the Contracting State GB since in their view, said designation contained an obvious mistake.

Premium and Cathay assert that it lies within the competence of the Opposition Division (OD) to correct the Examining division’s (ED) decision to grant a patent pursuant to R 140 (identical with former R 89 EPC 1973). However, the present Board agrees with Virgin and believes that only the ED is entitled to correct its own decision.

R 140 reads as follows:
“In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.”
The Board agrees with Premium and Cathay that R 140 does not specify the competence to correct errors in a decision. The Board also notes that there is no other provision in the EPC specifying the competence for such a correction decision. Therefore, an interpretation of R 140 is necessary on this issue. The case law of the Enlarged Board of Appeal (EBA) and the Boards of Appeal has dealt with the question of which EPO department of first instance is competent to correct the decision for grant. In its decision G 8/95 [3.4] the EBA held:
“The competence to correct errors in a decision under R 89 EPC [1973] lies with the body which has given the decision. Hence, in the examination procedure the ED has to decide on a request to correct errors in the decision to grant.”
In the decision T 850/95 leading to the referral, the facts indeed differed from those of the present case since the request for correction was submitted prior to the mention of the grant of the patent and therefore prior to the date on which the decision to grant took effect according to A 97(4) EPC 1973. Consequently, no opposition proceedings were pending at the time when the request for correction was filed.

However, according to the case law of the Boards of Appeal, the ED has the competence to correct its own decision to grant also in situations where the request for correction was submitted after the initiation of opposition proceedings (T 226/02 and T 268/02).

In both decisions the Board referred to G 8/95 and held that the competence to correct errors in a grant decision lied with the ED which had taken that decision.

In T 226/02 [5.1], where the OD had corrected the grant decision pursuant to R 89 EPC 1973, the Board came to the conclusion that
“the OD acted ultra vires in taking a decision under R 89 EPC [1973] to correct a decision of the ED”.
In decision T 79/07 the Board acknowledged the ED’s competence for correcting the grant decision even after the OD had revoked the patent by a decision which was the subject of the appeal proceedings.

In the Board’s view the reason for acknowledging the ED’s exclusive competence to decide on a request for correction of the grant decision could be seen in the requirement developed by case law that the correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Hence there is an obvious mistake in a grant decision within the meaning of R 140, if the text given for grant is not and obviously cannot be what the ED actually intended, and the text erroneously indicated can be replaced by that on which the ED actually wanted to base its decision (see T 850/95 [3] and T 1093/05 [7]).

Premium argue that, in accordance with A 114(1) EPC 1973, the OD had to correct the grant decision since, as stated in decision T 156/84, it had the duty vis-à-vis the public not to grant or maintain patents which were not legally valid, irrelevant of how and when the EPO became aware of the circumstances being relevant for the legal validity of a patent.

The Board, however, does not agree with this argument. The principle of examination by the EPO of its own motion as set out in A 114(1) EPC 1973 applies in all proceedings before the EPO. However, this principle cannot justify acting ultra vires and it therefore only applies to the extent to which the EPO department acts within its competence.

This finding is also in line with decision T 156/84. The Board of Appeal concluded there that for establishing whether a granted patent can be maintained the OD was obliged to examine the relevance of cited state of the art even if it was introduced after expiry of the opposition period because the principle of examination by the EPO of its own motion (A 114(1) EPC 1973) took precedence over the possibility to disregard late-filed facts or evidence (A 114(2) EPC 1973). Decision T 156/84 concerned the question of how the OD had to deal with late-filed evidence which was filed in support of the ground for opposition under A 100(a) EPC 1973. However, there is no indication in decision T 156/84 that A 114(1) EPC 1973 could establish any competence. Consequently, neither A 114(1) EPC 1973 nor decision T 156/84 provides a basis for a competence of the OD for correcting the grant decision.

Lastly, the Board turns to the argument that the principle of good faith and the principle of proportionality, which were applicable pursuant to A 125 EPC 1973 in proceedings before the EPO, would establish a competence of the OD for correcting the grant decision. The purpose of A 125 EPC 1973 is to fill any gaps that may occur in the application of the procedural provisions of the EPC. However, the Board considers that these principles also do not establish a competence of the OD to correct the grant decision for the following reasons.

According to A 19(1) EPC 1973 the ODs are responsible for the examination of oppositions against any European patent. The substantive examination of the opposition is prescribed in A 101. If the opposition is admissible, the OD examines whether at least one ground for opposition laid down in A 100 EPC 1973 prejudices the maintenance of the European patent (A 101(1)).

A 100 EPC 1973 lays down the exclusive grounds for opposition being limited to and essentially the same as some grounds for revocation under national law (A 138(1)(a)-(c) EPC 1973). The function of this provision is to provide, within the framework of the EPC, a limited number of legal bases, i.e. a limited number of objections on which an opposition can be based (G 1/95 [4.1]).

An incorrect designation of a Contracting State is not one of the grounds for opposition under A 100 EPC 1973. This has also not been disputed by Premium and Cathay. It is established Board of Appeal case law that further grounds which would lead to a refusal of a European patent application in the examination proceedings cannot be successfully presented in opposition proceedings (see for example G 1/91; J 22/86 [18]; T 99/85 [4]; T 127/85; T 301/87 [3.3-4]; T 550/88 [4]; T 428/95 [4.2]).

In view of this established case law and the relevant EPC provision, the Board considers that the opposition procedure is not designed to remedy all possible deficiencies of the granting procedure or of a granted patent. For example, an objection on the basis that the granted patent claims are not concise and clear cannot be considered by the OD (see for example T 336/96). Also defects and errors of a purely formal character in the granting procedure cannot lead to a revocation of the patent in opposition proceedings since such defects are properly regarded as cured by the act of grant (J 22/86 [18]). Hence the scope of opposition proceedings is limited as regards the grounds for challenge to granted European patents.

Also after grant observations of third parties under A 115, first sentence EPC are only admissible if they oppose the patentability of the invention to which the patent relates. “Patentability” refers only to the substantive requirements set out in A 52 to 57 as the identical heading of Chapter I, Part II of the EPC suggests.

The provisions of A 99 et seq. and A 115 were drafted with the public interest in mind (see also T 60/91 [9.5]). Therefore, in inter partes opposition proceedings before the EPO account must not only be taken of the interests of the parties involved.

The Board shares the view that the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid and that the public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO (see T 156/84 [3.5]). However, this duty is subject to restrictions. As set out above, opponents in opposition proceedings and third parties filing observations can challenge the patent only in a limited scope. This means that neither the public nor opponents have legitimate expectations that any deficiency of the granted patent would be remedied by the EPO. Consequently, in the present case, the public could not legitimately expect that the designation of the Contracting State GB would be corrected in opposition proceedings. Therefore, the principle of good faith does not apply in the present case.

For similar reasons the principle of proportionality does not apply in the present case. It is obvious from the EPC provisions concerning post-grant proceedings that the legislator did not envisage empowering the OD to set aside all legal and factual consequences of any mistake which occurred in examination proceedings. It is therefore the Board’s view that the authority conferred to the OD by the EPC provisions cannot be extended because of the principle of proportionality.

In view of the above the Board concludes that in the present case the OD in opposition proceedings had no competence to correct the decision taken by the ED. Thus the OD would have acted ultra vires if it had corrected the grant decision. The same applies to the Board of Appeal in opposition appeal proceedings (A 111(1), second sentence EPC 1973). Consequently, the request for correction of the decision to grant must be rejected.

To read the whole decision, click here.

The file wrapper can be found here.

A related decision was discussed in a previous post.