Thursday, 7 July 2011

R 1/11 – Off Topic

The petition stems from decision T 128/10 (reported here). In this decision, the Board rejected an appeal against the revocation of the patent under consideration as inadmissible because it had been filed by the transferee before the requirements for recording the transfer had been met. The ‘appellant’ also requested the following questions to be referred to the Enlarged Board (EBA):
“Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or R 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant?
Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?”
The Board had refused to refer those questions with the following justification:
“[6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision.

[6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 EPC and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA.”
In their petition for review, the petitioners pointed out several shortcomings of T 128/10. Among other things, they criticized the refusal to refer a question to the EBA.

They finally referred the questions themselves, because the petition for review included the following questions:
Is the production of the documents providing evidence of the transfer of the patent under appeal, before the expiry of the period for filing the notice of appeal, sufficient under R 22(3) so that the transfer has effect vis-à-vis the EPO?

If yes, is the appeal admissible?

If no, what is the purpose of R 22 (3)? Should the board of appeal allow a request for correction of the notice of appeal? To which extent is the decision T 97/98 to be considered when assessing the admissibility of an appeal filed by an appellant whose identification is incorrect and whose representative is the same as in the first instance proceedings?
Here is what the Board had to say on these issues:

[3] Petitioner 1 contends that the lack of reasons for refusing to refer questions to the EBA amounts to a breach of A 112(1). The EBA is not clear about what is meant under this contention because there is no logical link between the lack of reasons alleged and the violation of A 112(1). A 112(1) would rather concern the refusa1 to refer per se, while the lack of reasons might be seen as a potential procedural defect under A 112a(2) or R 104.

As concerns the latter aspect, it is clear from the decision under review that the Board of Appeal did decide on this issue and that it gave the reasons why it refused to refer the questions to the EBA (see paragraph [6] of the decision).

Insofar as petitioner 1 seems to contend that the refusa1 to refer itself might be considered to be a breach of A 112(1) because it hinders the uniform application of the law […], the EBA notes that neither A 112a nor R 104 include in their list of deficiencies the refusa1 to refer questions to the EBA.

[4] The question of uniformity of the application of the law also underlies the questions the EBA is asked by petitioner 1 to answer. It is immediately apparent that they overlap the questions submitted to the Board of Appeal as a request for referral to the EBA, which request was rejected by the Board of Appeal […].

The treatment of such questions pertains to a different procedure governed by a completely different legal framework and thus falls outside the ambit of the present proceedings (see Explanatory remarks to A 112a, point 5, where it is clearly stated that the function of the petition for review is to remedy intolerable deficiencies occurring in individual appeal proceedings, not to further the development of EPO procedural practice or to ensure the uniform application of the law, OJ Special edition 4, 2007).

You might remember R 7/08 (reported here) where the EBA (in its composition pursuant to R 109(2)(a)) refused to refer a question to itself (pursuant to A 112(1)(a)) and justified this refusal by pointing out that the EBA was “not a “Board of Appeal” within the meaning of” A 112(1)(a).

The whole decision can be downloaded here. The file wrapper can be found here.