T 1196/08 – Romanian Rhapsody

The present decision deals with an interesting case of third party intervention.

The patent proprietor had extended its European patent to Romania. The patent was opposed, but the Opposition Division rejected the opposition (in 2008). The opponent filed an appeal against this decision. In February 2009, a Romanian company (SC Gedeon Richter Romania SA, hereinafter referred to as “SC”) filed a notice of intervention. The patent proprietor had indeed instituted infringement proceedings in Romania on November 26, 2008. The question to be answered by the Board was whether this intervention was admissible or not.

NB: The would-be intervener also requested the Board to refer questions to the Enlarged Board of appeal (EBA) and raised a R 106 objection because the Board had not heard the European Patent Organisation and the State of Romania on the topic to be decided.

*** Translation of the French original ***

[3.1.1] Subject to certain conditions, A 105(1)(a) and R 89 allow a third party to intervene in opposition proceedings after the opposition period has expired, if the party proves that proceedings for infringement of the same patent have been instituted against it.

[3.1.2] In the present case, the declaration of intervention has been filed during the opposition appeal proceedings, which is admissible according to decision G 1/94 of the EBA.

[3.1.3] Moreover, in order for an intervention to be admissible, the infringement proceedings have to be based on the very patent which is the subject of the proceedings at which the intervention is directed (see T 338/89 [4.1.2] and T 446/95 [2.1]).

[3.1.4] Therefore, it is appropriate to first clarify what is the subject of the present European opposition proceedings in application of the European Patent Convention (hereinafter referred to as “Convention”).

A 99(1), first sentence, EPC, provides that within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent. The Convention defines the notion of “European patent” in A 2(1) EPC 1973, which states that patents granted under the Convention shall be called European patents. According to A 3 EPC 1973, the grant of a European patent may be requested for one or more of the contracting states. Therefore, the opposition proceedings concern a European patent which has been granted for at least one contracting state. However, it is irrelevant for the opposition proceedings if the effects of this patent have been or will be extended. This clearly follows from R 84(1) according to which the opposition proceedings may be continued only at the request of the opponent if the European patent has been surrendered in all the designated contracting states or has lapsed in all those states.

This is why the Board concludes that “the same patent” [French version : ce brevet] within the meaning of A 105(1)(a) is a European patent within the meaning of A 2(1) EPC 1973, i.e. a patent granted under the Convention for one or more of the contracting states, which is, as underlined by the [patent proprietor] a system of law for the grant of patents for invention that is common to the contracting states, pursuant to A 1 EPC 1973. Consequently, the infringement proceedings before national jurisdictions have to be instituted based on a European patent which has been granted under the Convention for at least one contracting state if the conditions of A 105(1)(a) are to be fulfilled.

[3.1.5] In accordance with the evidence filed by the SC company, the infringement proceedings before the Romanian court are based on Romanian patent RO/EP 1108424 which has been obtained by extension of the European patent to Romania.

[3.1.6] The SC company is of the opinion that the Romanian patent resulting from an extension of a European patent has to be considered to be the same patent as a European patent granted under the Convention because the fact that Romania was not party to the EPC at the relevant date only constitutes a difference in view of the legal basis of the effects of the European patent, and not a difference in view of the fact that it is still (encore) a European patent. (NB: The whole sentence is unclear in the French original.)

The Board does not share this opinion, for the following reasons.

[3.1.7] The extension of the effects of European patents to Romania was possible as from October 15, 1996, i.e. the date on which the Agreement between the Government of Romania and the EPO on cooperation in the field of patents (“Cooperation Agreement”) entered into force (see OJ EPO 1994, 746 and 1996, 601).

The Cooperation Agreement is part of the international agreements which the President of the EPO is empowered to conclude subject to the approval of the Administrative Council (A 33(4) EPC 1973). As a bilateral ordinance, the Cooperation Agreement essentially deals – exhaustively and strictly separately from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the national law of the state allowing (autorisant) the extension and their relationship to national applications and rights based on the national Law on industrial property (see, for example, J 14/00 [1.3.2]).

[3.1.8] The extension system provides European patent applicants with a simple and economical means of obtaining patent protection in the states for which a Cooperation Agreement with the EPO has entered into force (states allowing the extension) (see, for instance, “Extension of European patents to Romania”, OJ EPO 1994, 746, (EEPR1), second paragraph, “Extension of European patents to Slovenia”, OJ EPO 1993, 574, (EEPS1) third paragraph, and OJ EPO 1994, 75, (EEPS2), I. Basic principles, second paragraph). Upon request of the applicant and subject to the payment of the prescribed fee, the effects of European patent applications (direct and Euro-PCT applications) and European patents extend to the state allowing the extension, which, however, is not party to the EPC. These effects are the same as those of national applications and national patents (see, for instance, “Extension of European patents to Romania”, OJ EPO 1996, 601, (EEPR2), points 8 and 9, and articles 4 and 5(1) of the Romanian extension ordinance (EO); EEPS2, I. Basic principles, second paragraph, and article 1 of the EO of the Slovenian government, OJ EPO 1994, 80).

As underlined by the [patent proprietor], the extension system may be considered to be an intermediate step for a state before it becomes a party to the Convention. This also follows from the preamble of the Romanian Cooperation Agreement, which stipulates that Romania, whishing to become a party to the EPC, wishes, as an intermediate step, to have a system allowing to extend the effects of a European patent to its territory (extension system).

[3.1.9] Although the extension proceedings essentially correspond to the system provided by the EPC, which is applicable to the states that are party to the Convention, the validity of the extension system is not based on the direct application of the EPC but exclusively on national law inspired by the EPC (see, for instance, EEPR2, point 15; EEPS2, I. Basic principles, second paragraph; J 14/00 [1.2.2]; J 9/04 [1.2.2]; J 2/05 [1.2.2], Singer/Stauder, EPÜ, fifth edition in German, 2010, article 2, point 9). As a consequence, the national law of the state allowing the extension governs the extension proceedings and the legal effects of the extension. As a matter of fact, the legal provisions governing the extension system in Romania, including all the conditions and all the legal effects of the extension, appear in the Romanian EO “Monitorul Oficial al Rômanei, Anul VIII, n° 195, August 21, 1996, 2, 4”, i.e. in an ordinance of the government of the state allowing the extension (see EEPR2, second paragraph).

[3.1.10] As far as the applicability of the EPC is concerned, the provisions of the Convention, of its implementing regulations and of the rules relating to fees of the EPO apply only to the extent to which the national provisions refer to them (see, for instance, article 10 of the Romanian EO and article 10 of the Slovenian EO; EEPR2, point 15; Singer/Stauder, op.cit., article 79, point 40). The wording of the Romanian EO makes it very clear that its references to the provisions of the Convention are exhaustive (see also J 14/00 [1.3.1]) on the subject of the Slovenian EO). According to the Romanian provisions, the only references to the EPC concern the time limits and the means of payment of the extension fee (see article 3 of the Romanian EO and EEPR2, point 15).

[3.1.11] It follows from what has been said that the European patent under consideration extends to the Romanian territory exclusively on the basis of Romanian national law and that, according to article 5(1) of the EO, it has the same effects as a national patent (see also EEPR2, point 9).

However, as explained by the SC company, the European patent under consideration the effects of which extend to Romania is not a national patent granted by the Romanian national office. This legal evaluation is based on the wording of certain provisions of the EO, such as for example articles 5(1), 8, and 9, according to which a distinction is made between a European patent the effect of which extends to Romania and a national patent (see also EEPR2, points 9, 12, and 14). In the present case, the facts, therefore, differ from the facts on which decision T 446/95 was based, so that the latter is not relevant for the present case.

[3.1.12] As for the European patent within the meaning of article 2(1) EPC 1973, it is granted under the Convention by the EPO, for each of the contracting states that are designated pursuant to A 79 EPC 1973. Once it is granted, a European patent has, in each of the contracting states for which it is granted, the effect of a national patent granted by that state (A 2(2) and A 64(1) EPC 1973). It follows that the European patent system, including the effects of a European patent in the contracting states, is based exclusively on the direct application of the EPC.

[3.1.13] Although there are some parallels between the extension system and the European patent system, there are some fundamental differences between those two systems. The extension system, including all the conditions for and all the legal effects of the extension, is exclusively based on the application of national law, unless there are explicit references to the EPC. Moreover, the European patent system and the effects of a European patent in the contracting states are exclusively based on the direct application of the EPC, it being understood that some provisions of the EPC refer to national law. Therefore, it follows from the extension of the effects of a European patent under the national law of the state allowing the extension that the European patent has the effects of a national patent, whereas the designation made pursuant to A 79 EPC 1973 has the consequence that the European patent is granted by the EPO based on the Convention, with effect for the designated contracting states (see Singer/Stauder, op.cit., article 79, point 40). In view of this different legal situation, the Board concludes that a patent extended to the territory of a state allowing the extension is not a European patent within the meaning of A 2(1) EPC 1973. It may well be that the Romanian patent resulting from the extension has its origin in a European patent application and, subsequently, in the European patent granted on the basis of this application in accordance with the Convention, but, even if this were admitted, it follows from the legal situation explained above that the extension and the legal consequences resulting from it are exclusively based on national law. As a consequence, the patent resulting from the extension does not have the legal nature of a European patent within the meaning of A 2(1) EPC 1973.

[3.1.14] According to the Board, as far as the present case is concerned, it follows that Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration and which is the subject of the infringement proceedings before the Romanian court, is not a national patent granted in Romania. The Board also concludes that the Romanian patent is exclusively based on national law, i.e. on Romanian law, and not on the Convention. In other words, the Romanian patent is not a patent that has been granted by the EPO for Romania, in application of the Convention. This is why the Board is of the opinion that the Romanian patent is not a European patent within the meaning of A 2(1) EPC 1973. As a consequence, Romanian patent RO/EP 1108424 does not correspond to European patent EP 1108424, which is the subject of the present opposition appeal proceedings. Consequently, the intervention does not satisfy one of the requirements of admissibility enshrined in A 105(1)(a). (see point [3.1.3] above).

[3.1.15] Moreover, the provisions of the Romanian EO do not refer to the provisions of A 105. The references of the Romanian EO to the provisions of the EPC being exhaustive (see point [3.1.10] above), the question of whether A 105 can be applied by analogy does not even arise.

[3.1.16] The SC company invokes the Treaty on European Union (TEU) and the TRIPS (Trade-Related aspects of Intellectual Property rights) Agreement and requests that articles 23 and 49 TEU and articles 41(2) and 49 of the TRIPS Agreement be taken into consideration when the applicability of A 105 is interpreted.

The Convention is a system of law, common to the contracting states, for the grant of patents for invention (A 1 EPC 1973). It constitutes a special agreement within the meaning of article 19 of the Paris Convention for the Protection of Industrial Property and a regional patent treaty within the meaning of article 45 PCT (see the third paragraph of the preamble of the Convention). The Convention does not come under Community law (see EPÜ, Münchner Gemeinschaftskommentar, 1998, article 1, III, 1.a))

The European Patent Organisation is not party to the TRIPS Agreement (see G 1/97 [5a]). However, the provisions of this agreement, very much like decisions of the European and international Court of justice and national decisions, are to be taken into account by the Boards of appeal, which nevertheless are not bound by them (G 2/02 and G 3/02 [8.6]; T 1173/97 [2.2]) However, the EBA has also declared:

“Whereas it is legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret provisions of the EPC which admit of different interpretations, specific provisions of TRIPS cannot justify ignoring express and unambiguous provisions of the EPC. To do so would usurp the role of the legislator.” (G 2/02 and G 3/02 [8.6])

The Board is of the opinion that these considerations also apply for the TEU.

The Board has explained (see points [3.11-15] above) that the provisions of the Convention as it stands and in particular A 105, as well as the national provisions of the Romanian EO clearly exclude the possibility of intervening in the proceedings based on infringement proceedings concerning a Romanian patent resulting from the extension of a European patent to Romania. Therefore, it is not possible to come to a different conclusion based on the provisions of the TEU or the TRIPS Agreement. On the contrary, it is up to the competent lawmaker to provide the possibility of intervening in such a situation.

[3.1.17] The SC company has also pointed out that it had interest to act against the Romanian patent resulting from the extension because of the proceedings pending before the Romanian court, and in particular in having the nullity proceedings stayed until the outcome of the present appeal proceedings was known. The Board accepts that such an interest to act may exist. However, taking into account the legal situation described above concerning the intervention pursuant to A 105(1)(a), the SC company has to act before the Romanian national legal institutions.

[3.1.18] As a consequence, the intervention of company SC, based on the infringement proceedings before the Romanian court based on Romanian patent RO/EP 1108424 resulting from the extension to Romania of the European patent under consideration, is inadmissible because it does not comply with the requirements of A 105(1)(a).

[3.2] A 115, first sentence, provides that in proceedings before the EPO, following the publication of the European patent application, any third party may present observations concerning the patentability of the invention to which the application or patent relates. The documents filed by the SC company concerning the patentability of the invention that is the subject of the patent under consideration are considered to be third party observations pursuant to A 115, first sentence. However, the Board underlines that, pursuant to A 115, second sentence, the SC company is not a party to the proceedings. As to the substance of the case, the letters dated February 24, 2009, December 15, 2009 and October 27, 2010, which are considered to be third party observations pursuant to A 115, do not contain elements that had not been mentioned by the appellant yet.

Referral to the EBA

[4.1] The SC company has asked the Board to refer a question to the EBA in case it would decide that the EO would lead to issuing national patents. According to the SC company, the question of the legal nature of a European patent that has been extended to Romania and the related question of whether an intervention pursuant to A 105 was admissible constitute points of law of fundamental importance.

[4.2] According to A 112(1) EPC 1973, 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.

A question involves a “point of law of fundamental importance” within the meaning of A 112(1)(a) if it is relevant in a substantial number of similar cases and is therefore of great interest not only to the parties in the present appeal but to the public at large. (see, for instance, T 271/85). However, a question that involves a point of law of fundamental importance does not necessarily have to be referred to the EBA if the Board itself can answer it without doubt (see, for instance, J 5/81; T 198/88; J 22/95; Case Law, 6th edition 2010, VII.E.14.2). The Board has explained in detail (see points [3.1.7-14] above) why Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration, is not a national parent granted in Romania, but a patent that is exclusively based on national law, i.e. on Romanian law, and not on the Convention. The Board has also explained why Romanian patent RO/EP 1108424 is not a European patent within the meaning of A 2(1) EPC 1973 and why the intervention pursuant A 105(1)(a) is, therefore, inadmissible.

[4.3] As mentioned above (see points [3.1.1-18] above), the present Board has no doubts that in the present case the intervention is inadmissible because Romanian patent RO/EP 1108424 does not correspond to European patent EP 11108424, which is the subject of the present opposition appeal proceedings. Consequently, one of the conditions of A 105(1)(a) is not fulfilled. Therefore, there is no point of law of fundamental importance which would have to be clarified by the EBA.

[4.4] These reasons have led the Board to decide that there is no need for referring the questions of the SC company to the EBA.

R 106 objection

[5] The objection raised under R 106 has to be rejected for the following reasons:

A 113(1) EPC 1973 provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The right to be heard within the meaning of A 113(1) EPC 1973 applies to all proceedings before the EPO and to all parties to the proceedings (Singer/Stauder, op.cit., article 113, 2). Third parties which, according to A 115, second sentence, are not parties to the proceedings, cannot invoke the right to be heard (G 4/88 [2]). Neither the European Patent Organisation nor the State of Romania are parties to the present proceedings under A 107 EPC 1973. Consequently, in the present case, the fact that the Board has not given the European Patent Organisation and the State of Romania the opportunity to file observations does not violate the right to be heard.

A hardly surprising outcome.

On a teleological level, one might add that the possibility of intervening in opposition proceedings is justified by the fact that the fate of the patent can be decisive for the outcome of the infringement proceedings: a revocation of the opposed patent will deprive the infringement proceedings of their very cause. There is no equivalent justification here because even if the European patent is revoked, the Romanian spin-off is not (at least not automatically). It may be found to be valid by a Romanian court. In other words, there is no direct effect of the revocation (or limitation) on the infringement proceedings before the Romanian court.

To read the whole decision (in French) or have a look at the file wrapper, click here.

NB: The decision is also commented on Le blog du droit européen des brevets. 

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