Monday, 5 September 2011

J 21/09 – Passing The Buck

The present decision deals with a request for reimbursement of additional search fees.

The Examining Division (ED) had pointed out an “a posteriori” lack of unity of the application and had requested the applicant to pay four further search fees. The applicant paid the fees but requested them to be reimbursed.

The extended search report dealt with unity and stated that the five inventions were not unitary.

The applicant amended the claims but, on August 29, 2008, reiterated its request for reimbursement of the further search fees.

A communication pursuant to R 71(3) was issued on February 16, 2009.

There was a telephone conversation on February 27, 2009, after which the ED sent a communication announcing the reimbursement of two further search fees. The applicant then requested an appealable decision on the remaining two further search fees.

On March 25, 2009, the ED has issued this decision. The decision states that inventions 2 and 4 lacked unity of invention and that the payment of further search fees was appropriate. Inventions 3 and 5 were also said to lack unity but reimbursement of the fees was granted because the search effort was not significant.

The applicant filed an appeal and requested reimbursement of the two further search fees and of the appeal fee.

In a communication dated August 11, 2009, the EPO told the applicant that technical Board of appeal (TBA) 3.2.03 would deal with the appeal. Later, on March 11, 2010, the applicant was told that the appeal had been transferred to the Legal Board of appeal (LBA).

In a communication dated March 23, 2011, the Legal Board expressed doubts as to its competence. It finally referred a question to the Enlarged Board of appeal (EBA), for the reasons given in the decision. 

The appellant requested the Board to ask the EBA to clarify the applicability of a posteriori objections of lack of unity. However, it did not provide concrete questions to be referred.

*** Translation of the German original ***

[1] The impugned decision was issued by the ED as an interlocutory decision allowing a separate appeal (A 106(2)). The appellant is adversely affected by this decision (A 107). The appeal complies with the formal requirements and has been filed in due time (A 108). Therefore, the appeal is admissible.

Competence of the LBA

[2] It is a generally accepted principle for proceedings conducted in accordance with the rule of law (rechtsstaatliche Verfahren) that an instance in charge of reviewing [decisions] (Überprüfungsinstanz) has to check its competence of its own motion, at each stage of the proceedings.

[3] It is not prima facie obvious to the Board whether the LBA or rather a TBA should be competent for reviewing the only question that has been decided, i.e. the refusal to refund the further search fees. As a consequence, the LBA considers that it has to examine its competence.

[4] The impugned decision does not explicitly mention the applicable provisions of the EPC. However, it appears to be undisputed that, from the procedural (verfahrensrechtlich) point of view, the decision is essentially based on R 64(2).

[5] According to its wording, a decision pursuant to R 64(2) is not a decision concerning the refusal of a European patent application or the grant, limitation or revocation of a European patent within the meaning of A 21(3)(a). In view of the right of the applicant to amend alone, the outcome of the decision concerning the refund of a search fee does not necessarily have a correlation with the outcome of the decision on the grant or the refusal of the application itself. Accordingly, the default rule (Auffangregelung) pursuant to A 23(3)(c) would apply, i.e. by appeals against such decisions the LBA would be competent.

[6] However, the Board is concerned that this result might not be justified in view of the whole system of appeal proceedings under the EPC, in particular in view of the role – expressed in A 21 – of the technically qualified members of the Board of appeal in cases where technical questions are to be answered. It appears to be undisputed that a decision under R 64(2), such as the present one, presupposes, as a rule, the assessment of technical facts, i.e. the question of whether there is unity of invention for the claimed inventions. The appellant is right in pointing out that the wording of the criteria for unity in R 44(1) clearly is directed to the technical content of the features, so that a statement on unity presupposes the decision-making body to carry out a detailed and technically competent discussion of the technical facts.

[7] The TBA have this technical competence that is needed in each concerned domain. On the one hand, the important role of the technically qualified members already follows from the wording of the law, i.e. from the rules governing the composition [of the Boards] pursuant to A 21 (two or three technically qualified members vs. one or two legally qualified members). On the other hand, there is no doubt concerning the intention of the lawmaker to entrust decisions on cases comprising technical questions to Boards having a majority of technically qualified members. This intention is a recurrent theme in the travaux préparatoires for the EPC 1973, as is the intention that according to A 21(3)(c), the LBA should only deal with cases that concern only legal questions. See, for instance, document n° 4344/IV/63-D […] as well as proposition n° 2821/IV/63 of Kurt Haertel […].

[8] Decisions under R 64(2) may be expected to be rare and appeals against them to be even more rare. Not only are such decisions to be taken by the ED but, according to the wording of the provision, “during the examination of the European patent application”. It is true that the origin of this wording is to be found in the conscious decision of the lawmaker that the question of unity and, consequently, of a possible refund of further search fees that have been paid is not to be decided during the search but during the examining proceedings, and not by the International Patent Institute in The Hague, which, at that time, was still envisaged for carrying out the search, and which has become the Search Division of the EPO later on (see document IV/4860/61-D1 […]). However, this legal provision also shows that the lawmaker has wanted a decision on a refund of search fees to be part of the main proceedings, i.e. the examination proceedings, ending with the decision on the grant or the refusal of the application, rather than independent proceedings.

[9] Moreover, it has to be pointed out that the lawmaker apparently never considered a decision pursuant to R 64(2) (R 46(2) EPC 1973) to be an autonomous decision. At least the Board is not aware of any sources allowing to draw the opposite conclusion. The only reference to R 64(2) in the Guidelines (A XI 10.2.2, edition 2007, or the latest online version to be found here) does not make any statement on this topic either.

[10] Even if the decision of the refund of a further search fee does not necessarily depend on the fate of the application and is not a question to be decided in view of the grant or the refusal, as a rule, there is still a close connection with the technical content of the examining proceedings because, and as far as, the request to refund paid search fees is related to the objection of lack of unity that had been raised during the examining proceedings an contested or overcome by the applicant. As a rule, the ED’s refusal to refund paid further search fees presupposes that it first establishes that the objection raised (lack of unity) was justified. Therefore, in view of its content, the decision on the refund of search fees appears to be an ancillary decision (Nebenentscheidung) within the examining proceedings with respect to the main subject of the examining proceedings, i.e. the factual decision on the application.

[11] This understanding is not altered if the decision on both points is taken in two autonomous decisions that are formally separated, either for practical reasons, for instance, as a result of subsequent procedural acts to be carried out by the granting body, or as a consequence of the timing of the request by the applicant. Considering contents in this way, it could be argued that when there are two formally autonomous decisions relating to the main and ancillary aspects of the examining proceedings, it is the Board that would be competent for the main proceedings, i.e. a technical Board pursuant to A 21(3)(a) (or A 21(3)(b), as the case may be), and in particular the Board that is competent in the specific technical domain of the application, that would be competent for reviewing a decision concerning this auxiliary request.

[12] In a nutshell, the decision pursuant to R 64(2) could be considered to be an “ancillary issue (Nebensache) ex lege” with respect to the decision on grant or refusal, respectively.

[13] By comparison, in the cases in which there is no doubt that the LBA is competent, in a composition pursuant to A 21(3)(c), as a rule, the legal questions can be treated independently of the technical assessment of the subject-matter of the application.

[14] The case law concerning the present competence problem is both scarce and, to some extent, divided. The Board is aware of four decisions of the Boards where this question arose. In decisions T 94/91 and T 390/91 the TBA have tacitly assumed their competence without discussing the problem of competence. In later decisions J 24/96 [2] and T 1382/08 [1.1], however, the question is discussed in detail and answered by stating that the allocation pursuant to A 21(3)(c) unambiguously provides that the LBA is competent. This being said, in T 1382/08 [1.2-4] the TBA finally affirmed its competence because in this case the decision on the refusal to refund the search fee was only an ancillary decision with respect to the refusal of the application by the first instance.

[15] For the time being, the Board is of the opinion that it would be arbitrary to decide differently on the competence of the TBA or the LBA, depending on whether the ED had taken the decision on the application (refusal or grant) and the decision on the refund of the search fee in one single decision (then only annexed; the TBA is competent) or in two formally separated decisions. This would also result in, for instance, the first instance being able to determine the composition of the review body, see G 2/90 [2].

[16] In its decision G 3/03 [4-5] the EBA has decided that it is the TBA and not the LBA that is competent for deciding on a request for reimbursement of the appeal fee that has been transferred to the Boards after interlocutory revision had been granted because the request for reimbursement was an ancillary issue of the original appeal. Therefore, the board which would have been competent under A 21 to deal with the substantive issues of the appeal if no interlocutory revision had been granted was competent to decide on the request.

[17] The Board is of the opinion that the facts of the present case are not a priori incomparable. In the same way the request for reimbursement of the appeal fee presupposes the prior filing of an appeal, the request to have the search fee refunded presupposes that there has been an objection of lack of unity during the examination proceedings. In both cases the critical issues underlying, on the one hand, the filing of an appeal or a decision of refusal, respectively, or preceding a decision to grant, or, on the other hand, the request for reimbursement of the appeal fee or the request to refund a search fee, respectively, are not necessarily the same. In both cases the decisions on the reimbursement of fees are decisions which presuppose that the main proceedings have been terminated, which appears to imply an “ancillary character” of the proceedings.

[18] For these reasons, the Board hesitates to follow the interpretation of decision J 24/96 according to which the LBA is competent.

[19] It is true that the EBA, in its decision G 2/90 [3.2,4], has explained that whenever the decision of an ED consisting of less than four members relates to some matter other than the refusal of a European patent application or the grant of a European patent, it is the LBA and not the TBA that is competent. Moreover, according to this decision, it is inadmissible to interpret an unambiguous legal provision (in that case: concerning the exclusive competence of the TBA) as being invested with some other meaning merely because other conceivable arrangements might offer certain advantages.

[20] However, it should be noted that this referral was based on a decision of the formalities officer of the Opposition Division (OD) to revoke the patent (because a fee for the maintenance of the patent in amended form had not been paid). The EBA (in point [3.2] of the Reasons) first points out that in contrast to appeals against the decision of an ED, where the law establishes the competence of the LBA, there is no such a competence for appeals against decisions of the OD. Moreover, the EBA found it to be decisive that matters entrusted to formalities officers may only be matters involving no technical or legal difficulties, so that there were no reasons why the LBA should be competent for such appeal proceedings (point [3.6] of the Reasons). In other words, the EBA has indeed examined whether the deciding Board had the required knowledge.

[21] It is precisely for that reason that the composition of a TBA always comprises at least one legally qualified member, so that it is ensured that the Board has the required legal expertise for assessing legal questions. Accordingly, the EBA did not have to discuss that each TBA has the necessary legal expertise which may be expected from a Court, and that the legal regulation of competence has to ensure that all questions – i.e. also the legal questions – are assessed in a satisfying way.

[22] The situation is not comparable when the LBA, which consists of jurists only, has to decide on the substantial justification of an objection of lack of unity when dealing with a request to refund the search fee. Such a decision can concern complex technical facts in all technological domains. Contrary to the LBA (if it is assumed to be competent) each of the TBA is competent for a limited technological domains and its members are technically qualified in the specific technological domain. In order to ensure a correct decision by the LBA, it could be necessary in extreme cases to consult an external expert. Certain national legal systems use this approach for a technical assessment of the facts. However, as a rule, this [approach] would appear to be disproportionate with respect to the value of the object of the appeal.

[23] In view of these remarks, and the considerations of the lawmaker regarding the search fee, it could also be necessary to consider whether there might be a legal loophole regarding the competence for appeals against isolated decisions of the ED refusing to refund the search fee. It could be that the lawmaker when drafting the provisions concerning the composition of Boards of appeal in A 21 did not envisage the possibility of a case having such a configuration because, as far as the actions of the Search Division (which requests the payment of further search fees) as such the issuing of appealable decisions is not foreseen at all.

[24] The Board is of the opinion that the above cited decisions create legal insecurity that should be eliminated. According to the Board, eliminating legal insecurity concerning the competence of a Board of appeal also qualifies as a point of law of fundamental importance. Clear and unambiguous rules as to the competence of a judicial body that is to review decisions is one of the fundamental requirements for due process and the efficient functioning of any judicial review system (J 12/01 [4]). Therefore, the EBA has repeatedly confirmed the admissibility of referrals [of questions] concerning the competence of Boards of appeal. This is why the Board decides to refer the question concerning the competence of the LBA pursuant to A 112(1)(a), as defined in the order of this decision, to the EBA.

[25] Irrespective of their unclear formulation, the further questions raised by the appellant in its response to the communication of the Board, which may arise in the appeal proceedings, are not relevant for the question of competence. The question concerning the requirements for raising an objection of lack of novelty “a posteriori” is closely related to the proper object of the appeal, i.e. the assessment of the existence or absence of a sufficient technical relationship between the group of inventions as established. If the EBA were to find that the LBA is not competent for dealing with appeals of the present kind, the LBA could not answer any question relating to the object of the appeal. For this reason alone, the requirements for a referral by the LBA are not fulfilled because the answer to the referral would not be required for a decision by the Board (A 112(1)(a), first sentence.


For these reasons it is decided that:

The following question is referred to the EBA:

Is it the TBA or the LBA that is competent for deciding on an appeal against a decision of the ED not to refund search fees pursuant to R 64(2) which has not been taken together with a decision on the grant of a European patent or the refusal of a European patent application?

Should you wish to download the whole decision or have a look at the file wrapper, just click here

The referral is pending before the EBA under the reference G 1/11.

A better English translation should become available in the OJ EPO in due time.

A French summary of the case can be found on Le blog du droit européen des brevets.