Monday, 26 December 2011

J 22/10 – Foreign Affairs

The present case was triggered by the late payment of extension fees.

The applicant had requested entry into the European phase on February 5, 2008 ; in the request the “extension” box was ticked but no extension states were explicitly mentioned:

In a letter dated April 7, 2008, the applicant’s representative stated that all five extension states were to be designated; he requested the EPO to debit five extension fees and five late payment surcharges from his deposit account.

In this letter, the representative cited the Guidelines, chapter A-III 12.2 and pointed out that the underlying interpretation of the Extension Agreements was incorrect.

According to him, the only sensible interpretation of the Extension Agreements with Albania, Macedonia and Serbia was “to use R 85a(2) EPC 1973 as was”. As there was no counterpart to R 85a(2) EPC 1973 under the EPC 2000, the old rule had to be applied. The representative also offered arguments why late payment or further processing should be available for Bosnia & Herzegovina and Croatia. So the extension fees for all five extension states could be paid at least two months late with payment of late payment surcharges or further processing fees.

The Receiving Section (RS) of the EPO was not persuaded : it refused the late payment and ordered the refund of the fees. It stated that the procedure for payment of the extension fee were not be governed by the EPC. All provisions relating to the implementation of the extension were established by national law in the relevant (extension) state, whereas the extension agreements merely established the amount of the extension fee. The respective national laws of the extension states became obsolete with the entry into force of the EPC 2000 and the deletion of R 85a (2) EPC 1973.

The applicant filed an appeal against this decision.

In compliance with earlier decisions on related matters, the Legal Board found itself to lack competence, and the appeal to be inadmissible:

[3] As noted by the Legal Board of Appeal in its communication dated 19 August 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS is open to an appeal and, therefore, whether the appeal is admissible.

[3.1] According to the exhaustive provisions of A 106(1), only those decisions of the EPO may be contested which are taken by the departments listed therein, i.e. by the RS, Examining Divisions, Opposition Divisions and the Legal Division, acting within the framework of their duties under the EPC.

[3.2] The Legal Board of Appeal found in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (Extension Agreements) were not based on the EPC itself but solely based on the Co-operation Agreements between the EPO on the one hand and the extension states on the other hand; it, therefore, rejected the respective appeals as inadmissible (J 14/00; J 19/00; J 9/04; J 2/05; J 4/05).

[3.3] Starting from this, the following aspect is relevant in deciding the current case:

[3.3.1] It follows already from the very nature of the Extension Agreements relevant in these appeal proceedings (Albania, OJ EPO 1995, 803 and 1996, 82; Bosnia and Herzegovina, OJ EPO 2004, 619; Croatia, OJ EPO 2004, 117; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia and Montenegro, OJ EPO 2004, 583, 2007, 406 and 2010, 10) that any decisions based on such international treaties do not fall within the scope of the EPC and, as a result of this, are not subject to the jurisdiction of the Boards of Appeal.

[3.3.2] The procedure for payment of the extension fees is determined by the Extension Agreements alone. Although there are certain parallels between the formal procedures of extension of protection under the Extension Agreements on the one hand and the designation of a contracting state under the EPC on the other hand (A 78(2) and A 79(2) EPC 1973, R 38(1) and R 39(1) EPC), the Extension Agreements form a legal system of their own that is distinct from the legal system created by the EPC.

References within the Extension Agreements to the EPC, in particular to the so-called period of grace under R 85a(2) EPC 1973 (in combination with A 79(2) EPC 1973, R 107(1)(d) EPC 1973 and the EPO Rules relating to Fees), do not override this fundamental distinction.

Consequently, the legal nature of any decision taken on the legal basis of the Extension Agreements remains within that legal system and does not extend to the legal system of the EPC.

[3.3.3] The Extension Agreements make it absolutely clear that references to provisions of the EPC are exhaustive and, thus, that there can be no corresponding application of other provisions, including those of A 106 et seq. concerning the appeals procedure.

Neither is there anything in the structure or legal nature of the Extension Agreements to support the appealability of the contested decision within the legal framework of the EPC. As bilateral agreements, the Extension Agreements essentially deal – exhaustively and strictly separated from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states.

Nor do the Extension Agreements provide for a transfer of jurisdiction on the EPO and its Boards of Appeal. Such a transfer could only have been established by an explicit and clear provision to this effect in the Extension Agreements. Particularly with regard to the principle of sovereignty of the extension states, there is no room for acknowledging an implicit transfer of jurisdiction from the respective national law and the national courts to the EPC and the Boards of Appeal.

[3.4] The Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system.

[4] All this has been brought to the appellant's attention by way of the communication of the Board dated 19 August 2011 to which the appellant chose not to reply. Having reviewed the facts and legal issues involved in this appeal case, the Board maintains the opinion already expressed in said communication and reiterated above.

[5] Since the contested notification of the RS dated 21 August 2009 refusing its request for late payment of the extension fee concerning the European patent application Nr. 06 752 688.9 is not open to an appeal according to A 106 the appeal has to be rejected as inadmissible.

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