T 689/05 – Muskets For Butterflies

In the present case an applicant requested that oral proceedings (OPs) before the Examining Division (ED) be held in Munich instead of in The Hague or that the EPO should bear the additional costs incurred to the OPs taking place in The Hague. The applicant also refused that the OPs be held as a video-conference. In its appeal against the decision of the ED refusing not only this request but also the grant of a patent, the applicant resorted to drastic arguments including that the principles of human rights had been violated and that the Diplomatic Conference did not have the power to amend the EPC.

[3] Article 11 of the Rules of Procedure of the Boards of Appeal of the EPO (RPBA) […] stipulates that a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise.

[4] The appellant argues that the decision was not reasoned regarding the requests to transfer the OPs to Munich and to refund (hereinafter “reimburse” because the travel costs were actually not paid to the EPO) the travel costs to The Hague and that this lack of reasoning amounted to a fundamental procedural violation which justified setting aside the impugned decision and remitting the case to the department of first instance.

[4.1] Firstly the board has to establish whether or not the reasoning of the impugned decision complies with the relevant provisions of the EPC 1973, in force at the date of the decision.

R 68(2), first sentence, EPC 1973 provides that decisions of the EPO open to appeal shall be reasoned. According to the established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 68(2) EPC 1973 a decision must contain, in logical sequence, those arguments which justify its order. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision, including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in the case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see e.g. T 278/00).

The board agrees with the appellant that the impugned decision is not reasoned with regard to the refusal of the applicant’s requests to transfer the OPs to Munich and reimburse the travel costs to The Hague, as announced by the chairman of the ED at the OPs (see point VI supra). To that extent, the decision does indeed not comply with R 68(2), first sentence, EPC 1973. In the board’s view, this (partial) lack of reasoning amounts to a procedural violation.

[4.2] However, the board is not convinced that, in the present case, this procedural violation constitutes a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA justifying setting aside the decision under appeal and remitting the case to the ED.

In the board’s view a fundamental deficiency is not caused by all procedural violations but rather by a substantial procedural violation.

A “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 7/83). In the present case, however, the above established procedural violation does not affect the entire proceedings before the ED for the reasons that follow.

[4.3] The subject and the main issue of the present appeal is the ED’s decision to refuse the present application. It is undisputed that the decision under appeal contains reasoning which complies with R 68(2), first sentence, EPC 1973 as far as the grounds for refusal of the application are concerned, namely that, in the view of the ED, the subject-matter of claim 1 according to the main request then on file did not involve an inventive step, contrary to A 56 EPC 1973, and that the subject-matter of claim 1 according to the auxiliary request then on file did not meet the requirement of sufficiency of disclosure under A 83 EPC 1973. The impugned decision undisputedly contains, in logical sequence, those facts and arguments which justify its order. The course of the appeal proceedings also shows that the reasons of the impugned decision enabled the appellant as well as the board to examine whether the refusal of the application could be considered to be justified or not. In the statement of grounds of appeal the appellant discussed the reasons and arguments indicated in the first instance decision for lack of inventive step of the subject-matter of the main request then on file. The appellant argued in detail as to why the decision on this main request was wrong and put forward arguments in support of inventive step. The appellant also dealt with the reasons of the impugned decision for rejecting the auxiliary request under A 83 EPC 1973 and argued as to why the ED’s conclusion was wrong. The board, too, was in a position to examine the first instance decision to refuse the application on the basis of the reasons given for lack of inventive step and insufficient disclosure, as can be seen from the provisional opinion given in the communication annexed to the summons to OPs. Also at the beginning of the OPs, the board and the appellant discussed in detail the patentability of the subject-matter of the claims according to the main and auxiliary requests, this being the main issue of the present appeal. This discussion raised no doubts as to the sufficient reasoning of the impugned decision as far as the refusal of the application was concerned.

Up to and also during this discussion the appellant never submitted that the case required immediate remittal to the first instance because of the alleged procedural violation (insufficient reasoning). To the contrary, the appellant had requested a decision by the board to grant a patent on the basis of the claims according to the main request or the first or second auxiliary request. It was only after the information on the board’s negative opinion regarding the allowability of any of these requests and the discussion on the reimbursement of the appeal fee and travel costs that the appellant requested that the decision be set aside and that the case be remitted to the first instance department because of the insufficient reasoning of the impugned decision.

[4.4] From the foregoing it can be concluded that, since the reasons of the impugned decision for refusing the present application comply with R 68(2), first sentence EPC, 1973, the board and the appellant were in a position to examine and discuss the reasons for the decision to refuse the application of the ED and that the missing part of the reasoning of the impugned decision had no influence on that discussion. Hence the first instance proceedings are not deficient as far as the reasons of the decision to refuse the present application are concerned. Consequently, the procedural violation as established above (see point [4.1]) did not affect the entire proceedings and can thus not amount to a fundamental deficiency within the meaning of Article 11 RPBA. Hence it would not be justified to set aside the impugned decision and to remit the case to the first instance department under Article 11 RPBA and A 111(1) EPC 1973 for that reason alone.

[4.5] The procedural violation as established above […] concerns the ED’s decision not to transfer the OPs to Munich and not to pay the travel costs to The Hague. The board considers both issues rather to be a subsidiary matter in the present case. Moreover the board was in a position to take a decision on the main issue of the present appeal at the OPs. Therefore the board is also of the view that it would have been disproportionate to set aside the entire impugned decision and to remit the case to the ED pursuant to Article 11 RPBA because of the partial lack of reasoning of the decision under appeal.

[5] The appellant alleged a further procedural violation in the statement of grounds of appeal. It submitted that there was no legal basis for holding OPs according to A 116 EPC 1973 at any other place than Munich and that, therefore, conducting OPs in The Hague amounted to a procedural violation.

[5.1] The right to OPs pursuant to A 116 EPC 1973 is a codified part of the procedural right to be heard under A 113(1) EPC 1973. This right to be heard at OPs also includes the right of a party to present its arguments at the correct place according to the EPC provisions (see also T 1012/03 [25]). Hence, in the present case, the appellant’s right to be heard pursuant to A 113(1) EPC 1973 would have been violated if the summons to OPs in The Hague were contrary to the relevant provisions of the EPC applicable at the date of the OPs. Such a violation would then have been a fundamental deficiency within the meaning of Article 11 RPBA even if the appellant had accepted that OPs were held as a video conference.

[5.2] In the present case OPs before the ED took place on 13 February 2004 in The Hague and thus after the Diplomatic Conference in November 2000 and before the revised EPC entered into force on 13 December 2007. Hence the facts of the present case are comparable to those of case T 1012/03, in which OPs before the ED took place on 3 June 2003 in The Hague.

[5.3] The present board concurs with the view taken in decision T 1012/03. In that decision it was held that the justification for conducting OPs before an ED in The Hague after the Diplomatic Conference in November 2000 and before the revised EPC entered into force on 13 December 2007 could be deduced from A 116 EPC 1973 in conjunction with A 10(1),(2)(a),(b) EPC 1973 since Articles 16 and 17 EPC were provisionally applicable as from 29 November 2000 pursuant to Article 6 of the Revision Act and clearly indicated that the Convention no longer restricted the competence of the President of the EPO to decide which transactions of the EPO departments should be carried out in Munich and which in The Hague (see [22-59]).

[5.4] Although the present board referred to decision T 1012/03 in the communication annexed to the summons to OPs, the appellant maintained the objection that holding OPs in The Hague at the relevant time violated procedural rights of the appellant because A 16 to A 18 EPC were not provisionally applicable in the present case.

[5.5] Turning now to the appellant’s arguments in support of the point of view that the provisions of A 16 to A 18 EPC were not provisionally applicable in the present case, the board takes the following view.

[5.6] The appellant argues that the Diplomatic Conference did not have the power to amend the EPC and, consequently, also not the power to declare an amendment to be provisionally applicable.

The board, however, is of the opinion that this argument must fail since A 172(1) EPC 1973 clearly stipulates that the EPC 1973 “may be revised by a Conference of the Contracting States”. On this legal basis a Diplomatic Conference of the EPC Contracting States met in Munich from 20 to 29 November 2000 and amended the EPC 1973. The Revision Act was unanimously adopted by the Conference on 29 November 2000 and has been signed by 17 Contracting States by 1 September 2001 (the end of the period for signature in accordance with Article 4(1) of the Revision Act). That this Revision Act was subject to ratification concerned its entry into force according to A 172(3) EPC 1973 and Article 4(2) of the Revision Act and not the competence of the Diplomatic Conference to revise the texts of the EPC 1973. Hence the conference had the power to amend the EPC 1973.

[5.7] The appellant further argues that the provisions of A 16 to A 18 EPC were not applicable to European patent applications filed before 29 November 2000 since those provisions were not “purely organisational and institutional” and therefore, according to item 2 of the Explanatory remarks on the Transitional provisions of the EPC […], Article 7’s transitional provisions applied to the revised A 16 to A 18 EPC. The board, however, does not agree with the appellant.

[5.8] First of all, Article 6 of the Revision Act has to be distinguished from Article 7 of the Revision Act. The transitional provisions pursuant to Article 7 of the Revision Act in conjunction with the Decision of the Administrative Council of 28 June 2001 provide for the applicability of the provisions of the revised version of the EPC at its entry into force and thereafter. Article 6 of the Revision Act, however, contains no transitional provisions but lays down the provisional application of parts of the Revision Act from the date of its adoption on 29 November 2000 and thus already before its entry into force […]. This means that these parts were effective as from 29 November 2000 […].

[5.9] The formal validity of Article 6 of the Revision Act and its ruling that inter alia the revised text of some Articles of the EPC took effect as from the date of the adoption of the Revision Act has already been acknowledged by the decisions J 13/02 [2.1] and T 1012/03 [54]. There is no reason for the board to disagree with these.

In particular the provisional application pursuant to Article 6 of the Revision Act does not contravene Article 25 of the Vienna Convention on the Law of Treaties of 23 May 1969 (hereinafter “Vienna Convention”). This Article stipulates that “a treaty or a part of a treaty is applied provisionally pending its entry into force if the treaty itself so provides”. This is exactly what happened when the Conference adopted Article 6 of the Revision Act.

[5.10] In the board’s view, it is not a prerequisite for the provisional application of the revised text of some of the EPC provisions pursuant to Article 6 of the Revision Act that these provisions should be purely organisational and institutional.

Article 6 of the Revision Act merely states that “Article 1, items 4-6 and 12-15, Article 2, items 2 and 3 and Articles 3 and 7 of this Revision Act shall be applied provisionally”. Article 1, items 4-6 of the Revision Act contain only the amended text of A 16 to A 18 EPC. This clearly indicates that the provisional application of the amended A 16 to A 18 EPC is not dependent on whether these articles are of a purely organisational and institutional nature (see also T 1012/03 [53]). Since Article 6 of the Revision Act exclusively provides for the immediate provisional application of the revised A 16 to A 18 EPC, the Explanatory remarks cannot introduce a further condition for the provisional application of parts of the Revision Act.

Moreover, the Explanatory remarks state under item 16:

“Special transitional arrangements are not necessary for the revised text’s purely organisational and institutional provisions […], i.e. Articles 4a, 11, 16, 17, 18, 21, 22, 23, 33, 35, 37, 38, 42, 50, 130, 134, 134a, 140, 149a and 164, the new Protocol on the Staff Complement, and revised Section I of the Protocol on Centralisation. These will apply as from the revised text’s entry into force, except that, under Article 6 Revision Act, Articles 16 to 18, 37, 38, 42 and 50, the Protocol on the Staff Complement and Section I of the Protocol on Centralisation apply provisionally as from 29 November 2000.”

[5.11] The board also does not agree with the appellant’s further argument that the provisional application of the amended A 16 to A 18 EPC as from 29 November 2000 was contrary to the “general principles of all modern democratic countries, and to the principles of human rights as applied by the European Court of Human Rights” and to the provisions of Article 28 of the Vienna Convention since this would retroactively interfere with the individual rights of applicants who had filed European patent applications before that date.

[5.12] The principle of non-retroactivity of treaties is established in Article 28 of the Vienna Convention, which reads:

“Unless a different intention appears from the treaty or is otherwise established, its provisions do not bind a party in relation to any act or fact which took place or any situation which ceased to exist before the date of the entry into force of the treaty with respect to that party.”

It is clear from the wording of this provision that the parties to a treaty are not prevented from giving to provisions of the treaty retroactive effect provided that their “intention appears from the treaty or is otherwise established”.

[5.13] The board notes that unlike Article 7 of the Revision Act, Article 6 of the Revision Act does not differentiate with regard to the provisional application between European patent applications which were filed before or after a specific date and, therefore there are no transitional provisions in respect of it for pending applications. This fact alone, however, does not mean that the general legal principle of "non-retroactivity" has been violated (see also T 1012/03 [55]). However, it does not mean either that the Conference intended to give to the provisionally applicable provisions any retroactive effect.

Hence, in the absence of any indication of such an intention, the principle of non-retroactivity of international treaties had to be observed in the present case when revised A 16 to A 18 EPC were applied provisionally. This position of the board is supported by the Explanatory remarks […] which explain that the provisions which apply provisionally under Article 6 of the Revision Act, can apply only to measures taken after the date on which the Revision Act was adopted, i.e. after 29 November 2000.

[5.14] The present application was filed on 22 November 1996 and therefore before the date on which Article 6 of the Revision Act was adopted by the Diplomatic Conference. In view of this fact it has to be examined whether the summons to OPs before the ED on 13 February 2004 in The Hague, which was posted on 6 November 2003 and thus after the date of adoption of the Revision Act, infringed the non-retroactivity principle under Article 28 of the Vienna Convention.

[5.15] It is generally accepted that the principle of non-retroactivity only guarantees that a new treaty is not applied to acts or facts which were already completed when the new treaty entered into force and that, therefore, “if an act or fact or situation which took place or arose prior to the entry into force of a treaty continues to occur or exist after the treaty has come into force, it will be caught by the provisions of the treaty” (see Wetzel/Rauschning, “The Vienna Convention on the Law of Treaties - Travaux Preparatoires”, Metzner, Frankfurt am Main, 1978, page 220, paragraph (3), with further references). In other words, the principle of non-retroactivity under Article 28 of the Vienna Convention is observed if a treaty is applied to matters that occur or exist on or after the entry into force of that treaty, even if these matters are based on an event prior to the entry into force of that treaty. 

It follows from this that the principle of “non-retroactivity” does not mean that, for example, procedural provisions cannot be amended during the pendency of a European patent application.

The principle of “non-retroactivity” and the above general rules also apply under the European Convention on Human Rights (formally European Convention for the Protection of Human Rights and Fundamental Freedoms): see for example Wetzel/Rauschning, "The Vienna Convention on the Law of Treaties - Travaux Preparatoires", Metzner, Frankfurt am Main, 1978, page 220, paragraphs (2) - (4), with further references, and Article 7 of the European Convention on Human Rights, which, however, prohibits the retrospective criminalization of acts and omissions.

As far as the “general principles of all modern democratic countries” are concerned, the board is not aware of any exception to the above general rules.

[5.16] The board considers that, taking into account the above general rules in the present case, the provisional application of the revised A 16 to A 18 EPC did not retroactively interfere with the applicant’s individual rights. Although the present application was filed before the date on which Article 6 of the Revision Act was adopted, the examination proceedings initiated by that filing were still pending and therefore “continued to exist” when the applicant was summoned to OPs after that date. Moreover, the summons and the OPs themselves occurred after the provisional application under Article 6 of the Revision Act was adopted.

[5.17] Further, the board accepts that the provisional application of the revised A 16 to A 18 EPC had a direct economic impact on applicants who had filed a European patent application before 29 November 2000 and appointed a representative in Munich (or nearby) if they were confronted with travel costs for OPs in The Hague. However, the board is of the view that, when filing a European patent application before the adoption of the Revision Act, applicants could have no legitimate expectation that they could never be summoned to OPs in The Hague.

It is obvious from the wording of A 116(2) and (3) EPC 1973 that OPs could take place before the Receiving Section, which was set up exclusively in The Hague in accordance with the provisions of A 16 EPC 1973, valid until the provisional application of the amended A 16 EPC. Hence it was not excluded under the EPC 1973 that parties or their representatives would have to travel to The Hague if the Receiving Section summoned them to OPs pursuant to A 116(1),(2) and Rule 71(1) EPC 1973. The board is aware that, in first instance proceedings, OPs only exceptionally take place before the Receiving Section, but are usual before the examining or opposition division. However, it is the board’s view that recognising a legitimate expectation in the present case on the basis of “chances” would undermine the seriousness of the concept of the protection of legitimate expectations.

[5.18] In view of the above considerations the board concludes that, in accordance with Article 6 of the Revision Act, A 16 to A 18 EPC as revised by the Revision Act provisionally applied to the present European patent application as from 29 November 2000 without any retroactive effect and that the transitional provisions under Article 7 of the Revision Act do not apply. Hence the appellant’s contention that the revised A 16 to A 18 EPC were not applicable in the present case and thus that there was no legal basis in the EPC for holding OPs in The Hague in the present case does not succeed.

Consequently, the provisions of A 116 EPC 1973 in conjunction with Article 10(1),(2)(a),(b) EPC 1973 form the legal basis for conducting OPs before the ED in The Hague.

As the appellant was summoned in proper form, in sufficient time before the OPs and to the correct place, the right to be heard in OPs (A 113(1) and A 116(1) EPC 1973) was not violated in the present case.

Thus there is no reason to apply Article 11 RPBA.

Conclusions

[6] For the above reasons, the appellant’s request to set aside the impugned decision and remit the case to the department of first instance because of a fundamental deficiency must be refused.

Don’t know why, but this case made me think of Talleyrand’s bon mot “Tout ce qui est excessif est insignifiant” (“All that is excessive is insignificant”).

To read the whole decision, click here.

The file wrapper can be found here.