T 1644/10 – You’re Late

In this case the EPO had published the mention of the grant of the patent under consideration on November 22, 2006. The B1 specification was published on the same day. Claim 1 contained an error: the EPO had published an earlier version of the claim instead of the claim as granted! In response to a request by the patent proprietor, the Examining Division ordered the publication of a corrected (B9) specification on March 19, 2008.

The error concerned claim 1 in its German version, German being the language of the application as filed. Claim 1 of the B9 document was different from claim 1 of the B1 document in the following way (underlined parts correspond to additions, struck-through parts to deletions)

Filter device (1) for the separation of undissolved solid substances from liquids, in particular in the fields of waste water purification and water treatment, with several filter elements (6), for the introduction into a container (2) containing the unpurified liquid, wherein through the individual filter elements (6) a filtrate is capable of being drained away, the fitter elements are arranged so as to be capable of rotating around a horizontal axis, and the filter elements (6) are designed and arranged in such a manner, that they form a hollow space (4) in the centre, characterised in that the filter device (1 ) comprises a gassing installation (8), which is stationarily arranged in the hollow space (4) and which for the formation of a mixture of gas and liquid is capable of being impinged with compressed gas and which is arranged in such a manner, that in the liquid a flow of a mixture of gas and liquid is capable of being produced at the filter elements (6), such that this flow renders an adhesion of solid substances to the filter elements (6) more difficult, and in that the filter elements (6) are arranged to be rotatable around the gassing installation (8), wherein the gassing installation (8) comprises either a hollow shaft (9) with gas outlet openings, or at least one elongated hollow body (10) that is arranged parallel to a hollow shaft (9) and closed on both ends, or at least one elongated hollow body (10) arranged horizontally as well as orthogonally to a hollow shaft (9), and the at least one hollow body (10) is connected with a chamber (12) of the hollow shaft (9) through connecting pieces (11), wherein the chamber (12) is connected with a compressed gas generator (14).

NB: The English version was the same for the B1 and the B9 documents.

The “opponent” filed an opposition against the patent on December 18, 2008, i.e. almost nine months after the publication of the corrected specification.

The Opposition Division (OD) concluded that the opposition was deemed not to have been filed.

The opponent filed an appeal.

The Board confirmed the verdict of the OD and made some interesting statements on the principle of protection of legitimate expectations (PPL, sometimes also referred to as “principle of good faith”).

I have finally found the time to translate this interesting decision. Admittedly, it is quite lengthy but I find it very pedagogical and well worth reading. For those who are in a hurry, here is a translation of the

Headnotes

1. Pursuant to A 99(1) EPC 1973 the moment at which the time limit for filing an opposition begins to run only depends on [the fact] that a European patent has been granted and that the mention of the grant has been published in the European Patent Bulletin. It does not depend on [the fact] that the patent specification has been published (see point [6] of the reasons).

2. The mention of the publication of a corrigendum to the patent specification in the European Patent Bulletin does not trigger a first or a further time limit for filing an opposition, even if the corrected patent specification has a scope of protection that is broader than the scope of protection of the patent specification as originally published. (see point [11] of the reasons)

3. The application of the principle of protection of legitimate expectations to a failure to meet the time limit to file an opposition in inter partes proceedings is subject to a balance of interests. The patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the content of the patent specification as published. This would contradict the principle of equal procedural treatment of the parties. (see point [27] of the reasons).

NB: Unless otherwise specified, all legal provisions refer to the EPC 1973.

*** Translation of the German original ***

[1] The appeal fulfils the requirements of A 106 to A 108 and R 99 EPC (2000) and is, therefore, admissible.

The name of the company of the opponent and appellant was to be corrected to “Huber SE” ex officio. It follows from the extract of the commercial register (Handelsregisterauszug) that “Hans Huber AG Maschinen- und Anlagenbau” has changed its legal form to become “Huber SE”. According to German law, such a change of legal form only concerns the legal form as such but not the legal personality. In application of the legal fiction provided in § 202 (1) of the German Transformation Act (Umwandlungsgesetz) the legal identity of the company undergoing the change is conserved. Therefore, the change of company to be taken into account ex officio at any time.

[2] The appeal cannot be allowed. The reasons set out in the impugned decision, according to which the opposition was filed belatedly are not objectionable, as will be explained in what follows.

Provisions to be applied (EPC 1973 vs. EPC 2000)

[3] As the application under consideration was filed on December 2, 2003, the question arises as to which provisions have to be applied after the entry into force of the EPC 2000. Here the following applies: procedural acts that were legally effective for the proceedings (verfahrensgestaltend schon rechtswirksam) and completed (e.g. the time limit for filing an opposition (TFO)) before the entry into force of the EPC 2000 on December 13, 2007, are to be decided on the basis of the old law (J 10/07 [1]; T 1172/04 [1], tempus regit actum). The new provisions are to be applied to factual situations that were not yet completed at that time, provided that they are mentioned in Article 1, n° 1, first and second sentences of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO, Special edition 1/2007, 197). The Board is of the opinion that the provisions cited hereinafter do not differ depending on whether the old or the new law are considered, even though there may have been numerical or linguistic adaptations in particular cases. Therefore, the Board does not consider it to be necessary to explain in detail the legal situation for each individual provision. As a result, only the provisions of the EPC 1973 are applied.

Computation of the beginning and the end of the TFO

[4] In agreement with the parties the Board of appeal bases its considerations on the following factual situation: The wording of claim 1 according to the decision to grant a patent of October 26, 2006, comprised three parallel alternatives A, B, and C, whereas the wording of claim 1 of the patent specification in the relevant German version only contained the alternatives A and B but not alternative C.

The opponent invokes the fact that its opposition was “only” directed against alternative C and that the 9-month TFO related to this subject-matter was only triggered by the publication of the B9 document. According to A 99(1), an opposition to a patent has to be filed within nine months from the publication of the mention of the grant of the European patent. In the present case, however, no mention of the grant of the European patent on which the decision to grant was based had been published because the patent specification B1 was incorrect.

Therefore, the Board of appeal has dealt with the legal question whether and how the publication of the patent specification can determine the moment in time when the TFO starts and whether the publication of the B9 document having a broader scope of protection than the B1 document can trigger a new TFO, which might be limited to the subject-matter of alternative C.

[5] Whether an opposition has been filed in due time depends on when the TFO begins, because this moment also determines the end of the nine-month TFO, as well as on the payment of the opposition fee.

According to A 99(1), which was in force when the opposition was filed, an opposition against a European patent has to be filed within nine months from the publication of the mention of the grant in the European Patent Bulletin (EPB) (A 99(1), first sentence); it shall not be deemed to have been filed until the opposition fee has been paid (A 99(1), second sentence).

[6] In the present case the mention of the grant of the European patent had been published in the EPB 06/47 on November 22, 2006. Therefore, the nine-month TFO ended on August 22, 2007. As a consequence, the opposition filed on December 18, 2008, was not filed in due time and is deemed not to have been filed, also because the opposition fee was paid by debit order only on this date. (As far as the requirement for the payment of the opposition fee within the TFO is concerned, see T 152/85 [1])

According to the wording of A 99(1), the TFO is triggered exclusively by the fact that a European patent has been granted and a mention of the grant has been published in the EPB, and not by the fact that a patent specification has been published.

No legal effect of the publication of the specification

[7] The appellant has not contested that in the present case the decision to grant a patent concerned embodiment C in claim 1 and that the mention of the grant of the patent was published in the EPB on November 22, 2006.

Regarding its content, the mention complied with the requirements pursuant to A 97(4). The opinion of the appellant according to which the mention was deficient to the extent that the patent specification B1 was deficient contradicts the wording of the provision which only refers to the procedural fact of the grant of the patent but not to the patent specification. The publication of the mention of the grant of the patent in the EPB on November 22, 2006, was complete and correct with respect to its content, as also admitted by the appellant and, therefore, was not affected by any of the deficiencies of the publication that were considered in decision J 14/87 [11].

[8] Considering that the publication of the European patent specification is not relevant for the computation of the time limit pursuant to A 99(1), this also holds true for the publication of a subsequent correction of the patent specification (cf. T 438/87 [4.1])

It also follows from the legal systematics of A 98 and A 99 that the wording of the patent specification as published has no legal effect even when its contents differ from the decision to grant a patent.

A 98 only provides:

“At the same time as it publishes the mention of the grant of the European patent, the EPO shall publish a specification of the European patent containing the description, the claims and any drawings”.

The fact that the lawmaker in the next article, i.e. A 99(1), nevertheless makes the beginning of the time limit depend on the day of the publication of the mention of the grant of the patent in the EPB only and does not refer to the actual publication of the patent specification makes it obvious that the TFO shall not depend on the public availability of the patent specification. Therefore, from a legal point of view, it is irrelevant for the beginning of the TFO whether the scope of protection defined in the patent specification is smaller than the scope of protection as defined in the decision to grant a patent or whether it exceeds it.

Systematics of A 64(1), A 97(4), and A 99(1)

[9] The arrangement of A 99(1) also serves legal security. As the EPB is published routinely at a date that is known in advance, the date of the publication of the mention of the grant of the patent is determined unambiguously and in a way that can be reproduced at any later moment, whereas the actual publication of the patent specification can be uncertain because the law does not establish any duty of documentation. However, the moment when a European patent becomes effective has to be understandable (nachvollziehbar) in a simple and safe way in view of the national patent rights which arise from it. Thus A 64(1) provides that a European patent shall, (subject to the provisions of paragraph 2) confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. Clearly the law has not added an additional requirement according to which the patent specification has to be published and must be correct as to its content for the patent to be effective.

It is not accidental that the moment at which the European patent becomes effective in the Contracting States pursuant to A 64 coincides with the moment at which the mention is published in the EPB pursuant to A 97(4) and the moment at which the TFO begins to run pursuant to A 99(1) but it serves the legal security the lawmaker intended. In this context it has to be noted that the grant proceedings are ex parte proceedings and would be factually terminated when the decision to grant a patent is sent (notified) to the applicant. However, notwithstanding these procedural principles the legal effectiveness of the decision to grant a patent is shifted pursuant to A 97(4) to the moment at which the mention of the grant of the patent is published in the EPB for the sake of legal security so that the European patent right arises at the same time as the national rights granted pursuant to A 64. These provisions do not establish that it is necessary to send the patent specification to the applicant or [make it available to] the public in order for the decision to grant a patent to become legally effective, and this would indeed be completely alien to the proceedings.

For these reasons also it has to be noted that the moment at which the patent specification is made available has no influence on the beginning of the TFO. This corresponds to the wording of A 99(1) according to which the opposition has to be filed “within nine months from the publication of the mention of the grant of the European patent”. Thus the lawmaker has expressly associated the beginning of the TFO with the moment at which the European patent becomes effective and at which national rights arise.

Confirmation of Legal Advice n° 17/90

[10] The Board of appeal considers Legal Advice n° 17/90, which has been published by the EPO (OJ EPO 1990, 260) but which is not binding on the Board to be correct in view of the legal situation under consideration.

The Board does not share the opinion of the appellant according to which the meaning of the term “misprints” used in point 1 of the Legal Advice is limited to mistakes created in the printing process. The Legal Advice defines this term as a divergence from the text on which the decision to grant was based, owing to error during production. This definition includes not only typesetting errors (“Druck-setz-Fehler”) but all possible mistakes that can occur during the production of the patent specification, including the use of a version of the claims that has not been granted.

Therefore, based on the legal situation presented above, the Board of appeal does not share the opinion of the appellant according to which the legal effect of the publication of the mention of the grant of the patent is limited to the extent to which the wording of the specification is identical to the content of the decision to grant a patent.

No legal effect of the publication of a corrigendum to the specification

[11] If even the publication of the B1 specification has no legal effect, then the mention of the publication of a corrigendum to the patent specification in the EPB 2008/12 on March 19, 2008, cannot have any legal effect in view of the beginning of the TFO. Therefore, because of the unambiguous legal situation the publication of the B9 specification has not triggered a “first” TFO, nor has it triggered a “further” TFO, limited to the embodiment C in claim 1.

Principle of unity of the opposition proceedings

[12] Moreover, it has to be noted that a “legal construction” such as the one aimed at by the appellant would contradict the principle of a unitary patent enshrined in the EPC.

It would be unlawful to consider that the first publication dated November 22, 2006, gave rise to a patent limited to the subject-matter of alternatives A and B in claim 1 and that it was only the publication of the corrected version on March 19, 2008, that gave rise to a patent encompassing the alternative C, because in grant or opposition proceedings [the EPO] can only grant a unitary patent based on the set of claims that has been expressly agreed upon by the applicant pursuant to A 113(2).

Moreover, the EPO does not have the power to grant a patent limited to individual claims of a set of claims presented [to it] and to reject the remaining claims of this set as not allowable. The set of claims is either allowable as a whole or to be dismissed, even if only one claim does not comply with the requirements of the EPC.

As can be seen from A 99(2), an opposition that is limited to certain claims encompasses (erfasst) the whole European patent and does not create a partial patent corresponding to the extent to which the patent has not been attacked. Therefore, in order to always ensure the maintenance of a unitary patent, A 99(4) provides that opponents shall be parties to the opposition proceedings as well as the proprietor of the patent. This provision guarantees the unity of the opposition proceedings and excludes, for instance, that there are several parallel or subsequent opposition proceedings.

As a consequence, the systematics of the unity of the opposition proceedings laid down in the EPC hinders mistakes that have occurred in the production and publication of the patent specification from having any influence on the beginning and the course of the TFO if the publication of the mention of the grant of the European patent as such was regular. As in the present proceedings the publication of the mention of the grant of the European patent was done in a legally correct way on November 22, 2006, the nine-month TFO began to run on that day. As a consequence of provisions of law, the mention of the correction of the patent specification, which was published at a later moment, did not cause the beginning of a completely new TFO nor did it trigger a TFO limited to the embodiment C of claim 1 of the patent specification, as explained by the appellant.

Legal delimitation with respect to a correction of a decision to grant a patent

[13] From a legal point of view, the present case of a retroactive correction of the patent specification is to be distinguished from the correction of the decision to grant. In the first case the patent specification is brought in conformity with the content of the decision to grant, i.e. the version of the patent as granted. The scope of protection of the patent as granted is not changed by [such action]. If the decision to grant a patent was extended, in the second case, by addition of embodiment C to claim 1, then this would result in a substantive amendment and, therefore, in an extension of the scope of protection conferred by the patent. The corresponding question of whether this correction could retroactively amend or extend the scope of protection in a legally effective (rechtswirksam) way does not arise in the present case. Therefore, the questions that have been referred to the Enlarged Board of appeal (EBA) in decision T 1145/09 are not relevant for the decision to be taken in the present case.

The “mere” correction of the patent specification, intended to bring the latter in conformity with the content of the decision to grant, does not change the substantive patent right that has arisen as a consequence of the decision to grant at all; it “only” corrects a misleading piece of information of the EPO concerning the content of the European patent, which has not changed.

Expiry of the TFO as an intermediate result

[14] The explanations given above, therefore, disprove the opinion of the appellant according to which the publication of the B9 specification on March 19, 2008, triggered a (fresh) nine-month TFO at least against the subject-matter of embodiment C of claim 1 of the patent. Because, therefore, as already shown under point [6] above, the TFO began to run when the mention of the grant was published in the EPB, on November 22, 2006, and, as a consequence, expired on August 22, 2007, the opposition filed on December 18, 2008, by the appellant has not been filed in due time.

Therefore, the Board of appeal had to examine whether there was a remedy for the failure to file the opposition in time. In this context, it was to be examined whether the requirements stipulated in A 122 constituted an exclusive set of rules or whether the PPL could be applied.

Domain of application of the rules for re-establishment pursuant to A 122

[15] The misleading information provided by the EPO in the form of the patent specification has caused the appellant to fail to file an opposition within the TFO because he only took notice of the scope of protection encompassing embodiment C by means of the publication of the B9 specification, after the TFO had expired. Therefore, the legal question arises whether re-establishment into the TFO can be granted.

The factual submissions of the appellant can be understood to mean, from a legal point of view, that the appellant had missed this time limit through no fault of his own, because he trusted that the wording of claim 1 of the German version of the originally published patent specification corresponded to the patent as granted. Therefore, the loss of rights caused by the expiration of the time limit was unjustified and had to be remedied. The further submissions of the appellant concerning the public’s need for legal remedies (Rechtsschutzbedürfnis) concern the procedural situation provided for in A 122, allowing someone who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit, to request re-establishment into the time limit.

[16] However, the appellant does not invoke this provision, and rightly so. He has not requested re-establishment and has not paid the corresponding fee because the law does not allow an opponent who has missed the TFO to benefit from re-establishment pursuant to A 122.

Although in the present case even the formal requirements pursuant to A 122 (request, time limit, fee, one-year deadline) have not been complied with and the appellant does not invoke this provision, the Board feels the need to explain why re-establishment of an opponent into the missed time-limit for filing an opposition is prohibited […] pursuant to A 122.

As a matter of fact, in order to decide on whether the failure to comply with the time limit can be legally “remedied” by application of the PPL, it is necessary to find that the factual situation is not governed by A 122. Otherwise the application of the PPL would constitute an inadmissible circumvention of the requirements laid down in A 122, which have not been fulfilled in the present case. In this context the one-year deadline of A 122(2), second sentence, has a great legal significance because the lawmaker has expressly laid down a positive foreclosure effect (Ausschlusswirkung) to the detriment of the person seeking a legal remedy.

Moreover, it is necessary to examine whether the lawmaker has intended a negative foreclosure effect. Insofar as the wording of A 122 would exclude an opponent from re-establishment, this would clearly constitute a negative foreclosure effect for the opponent. Then, if the factual situation is the same, the failure to meet the TFO could not ne remedied along other rules of law without violating A 122.

[17] The EBA has decided, as soon as in G 1/86 [8], that A 122 does not find application when the opponent has failed to comply with the TFO, not only because of its wording – which defines the applicant and patent proprietor to be entitled, but not the opponent – but also because for reasons of procedural certainty (Verfahrenssicherheit), because it is the filing of the opposition itself that creates a new legal instance (Rechtszug).

According to the ratio of this decision of the EBA an application of A 122 in favour of an opponent who has missed the TFO is excluded, be it only because at the expiry of the TFO the members of the public who could have become opponents did not have any concrete procedural relationship with the EPO.

The further reasons invoked by the EBA, relating to legal certainty, also exclude the direct or analogous application of this provision in favour of an opponent who has missed the TFO.

The fact that the opponent has missed the TFO through no fault of his own, does not alter the interests involved (Interessenlage) with respect to those of an opponent missing the TFO. Unlike ex parte proceedings, inter partes proceedings require [the EPO] to balance the interests of both parties. The “improvement” of the situation of the opponent could only be obtained at the expense of the patent proprietor’s legitimate expectations regarding the effectiveness and legal force (Rechtskraft) of the decision to grant. The EPC has expressly solved this conflict of interests in favour of the patent proprietor and has given the principle of legal effectiveness (Rechtskraftwirkung) priority by excluding a potential opponent from requesting re-establishment after having missed the TFO. An opponent who misses the TFO in spite of all due care required by the circumstances having been taken, therefore, is referred to the possibility of national nullity proceedings and cannot request re-establishment into his rights by means of a direct or analogous application of A 122.

This legal opinion has already been expressly validated in the case law, in decision T 702/89 [3]. The Board of appeal is of the opinion that this assessment still holds true because whenever the interests of the opponent in being re-established and legal certainty regarding the validity and legal force (Bestands- bzw. Rechtskraft) of a European patent are to be balanced, legal certainty is to be given priority in view of the effect of a finally granted (bestandskräftig) patent in the Contracting States (A 64).

Moreover, it is to be noted that the legal possibility of re-establishment would contradict the principle of unity of the opposition proceedings explained above under point [12] when there is more than one opponent because a re-establishment into the missed time limit would de facto extend the TFO. Additional opposition proceedings initiated retroactively by “re-establishment” could take a different turn, from the point of view of procedural law, than opposition proceedings that have been partly or completely terminated before, and could, therefore, lead to different versions of the patent.

Application of the PPL when time limits are missed

[19] The fact that the TFO has been missed cannot be “remedied” in the present case by invoking the PPL, as will be explained in more detail below, even if the appellant has not filed an opposition because it trusted that the patent specification issued by the EPO was correct.

PPL in connection with A 125

[20] The appellant invokes a violation of A 125 because the PPL has not been taken into account.

According to this provision, in the absence of procedural provisions in the EPC, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States.

It follows that in order for this provision to be applied there has to be a legal loophole in the procedural provisions of the EPC. Also, there have to be principles of procedural law that are recognised in the Contracting States.

The statement of the EBA (see G 1/86 [4,7]) that according to the documents relating to the EPC, even in a case of force majeure an opponent should not be granted the right to re-establishment (and, therefore, [re-establishment] into a missed TFO) makes clear that in this context A 122 does not constitute a legal loophole but a negative foreclosure provision. Falling back on principles of procedural law generally recognised in the Contracting States pursuant to A 125, based on a factual situation governed by A 122, would be excluded because there is no legal loophole.

[21] The only way to consider that the factual situation of the present case is not objectively governed by A 122 is [to base one’s reasoning on the fact] that the appellant has trusted the patent specification B1 issued by the EPO to be correct and, as a consequence, has omitted to file an opposition in due time.

By issuing an incorrect patent specification B1 the EPO has not fulfilled its duty of publishing the (correct) patent specification laid down in A 98. This misleading information of the EPO extends beyond the factual situation governed by A 122(1). The factual element (Tatsbestandsmerkmal) “in spite of all due care required by the circumstances having been taken” only concerns the duties of the applicant/patent proprietor and is intended to encompass the malfunctions (Störungen) resulting therefrom. That the public has been misled by the incorrect patent specification B1, however, has its origin in a fact that is related to the duties of the EPO and which is not governed or excluded by A 122(1).

The factual point of contact for the application of the PPL as a remedy for having missed the time limit, therefore, is constituted by the false information of the public by the EPO, by means of the publication of the patent specification B1.

Legislative content of the PPL

[22] The case law of the Boards of appeal acknowledges that in general a user of the European patent system has to be able to trust the legal validity (Rechtsgültigkeit) of documents and procedures of the EPO and that he shall not be prejudiced if they are incorrect. The EBA has repeatedly found that the protection of legitimate expectations is acknowledged in the Contracting States to the EPC and anchored in European Community law (see G 5/88 [3.2] and G 2/97 [1]).

[23] However, the PPL as a “procedural principle” is not a rule of law that is uniformly defined, neither in the case law of the Boards of appeal nor in the case law of the Contracting States, and it cannot be directly applied as a concrete procedural rule by referring to A 125. Therefore, the application of this principle is not unrestricted and always has to be examined within the framework of the concrete procedural situation under consideration. When doing so, one has to take into account the procedural system of the EPC on the one hand and the concrete procedural embodiments (verfahrensrechtliche Ausgestaltung) of the PPL in the Rules of procedure of the Contracting states on the other hand.

[24] For instance, there is no generally accepted principle in the Contracting States according to which, when a time limit for using legal means in inter partes proceedings has been missed, it is sufficient to invoke some “official” false information in order to obtain a new time limit for using the legal means after the “official” correction, or for the time limit to be deemed not to have been missed.

Considering the present procedural question as to when the TFO begins to run after the grant of a patent, the German Federal Patent Court has decided, quite to the contrary, that in a legal situation corresponding to § 59(1), first sentence, of the German Federal Patent Law, a clear-cut entry into force of the legal effects of the patent is necessary for the sake of legal security [and that] the publication of the patent specification and its correctness as regards the content is not an additional requirement without which the TFO cannot effectively begin to run (BPatGE 28, page 18) [. The Court has] referred the opponent to the possibility of file inspection whereby it was possible to know the exact version of the patent. [NB: I had to interpret and complete the German sentence because it is unclear and appears to contain at least two syntax errors]

[25] In the decisions of the Boards of appeal also, the protection of legitimate expectations is considered to be a mere assessment criterion and not an absolute (fest normiert) rule. There have been differences regarding the legal consequences (Rechtsfolge): either re-establishment into the missed time limit has been granted (T 781/04 [10]) or the applicant was treated as if he had carried out the missing act (in due time) (cf. J 14/94 [9]; T 1973/09 [2.4])

Content of the decision G 5/88 of the EBA

[26] Decision G 5/88 of the EBA, applying the PPL, treats the opponent – whose opposition had been filed at the German Patent Office in Berlin within the nine-month TFO but had reached the EPO in Munich after expiration of this time limit – as if he had filed the opposition in due time at the EPO. Therefore, the legal consequence of the PPL to be applied was not a re-establishment into the missed time limit but the legal fiction of timeliness. Therefore, this decisions opens the legal possibility of remedying the fact that a time limit had been missed through no fault [of the opponent] without requiring the legal requirements for re-establishment laid down in A 122 to be fulfilled. By proceeding in this way the EBA has made the patent proprietor’s legitimate expectations and right to the legal effectiveness of the decision to grant subordinate to the interest of the opponent in an effective assertion of his legal rights (Rechtsverfolgung).

[27] However, the patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the contents of the patent specification. This would indeed contradict the principle of equal procedural treatment of the parties.

Such a subordination can only be justified on the basis of the individual circumstances. In the factual situation underlying the decision G 5/88 there were such particular circumstances because the patent proprietor had received the notice of opposition within a time frame in which he would also have received a notice of opposition filed in due time. Moreover, he had not received a notification stating that there had not been any opposition filed within the nine-month TFO. Therefore, the patent proprietor had no reason to have legitimate expectations regarding the legal effectiveness of the decision to grant after all. As he had received a notice of opposition immediately after the expiration of the TFO, he had to consider the possibility of a revocation or amendment of the decision to grant a patent. Therefore, the question of whether the opposition had been filed in time and was, as a consequence, admissible, depended on the decision of the EPO that still had to be taken. This factual situation does not justify any legitimate expectations of the patent proprietor regarding the legal effectiveness of the decision to grant that are worthy of protection.

[28] In the present case there are no circumstances that could justify giving the legitimate expectations of the appellant (opponent) regarding the correctness of the content of the patent specification priority over the legitimate expectations of the patent proprietor regarding the validity of the decision to grant, because no notice of opposition was filed within the TFO.

Quite to the contrary, after the expiration of the nine-month TFO the respondent received the communication of the EPO stating that no opposition had been filed. Moreover, it was not part of the duties of the respondent to ensure the correctness of the content of the patent specification because this is the exclusive duty of the EPO pursuant to A 98.

Nor can the appellant’s error concerning the consequences of the publication of an incorrect patent specification establish a situation justifying legitimate expectations (Vertrauenstatbestand) in his favour. It belongs to the appellant’s duties to keep himself informed on the legal consequences of a patent specification having an incorrect content, all the more as the EPO in Legal Advice n° 17/90 has expressly pointed out that the patent specification has no legal effects. It is true that the text of the patent specification is intended to facilitate the access of the public to the content of the patent as granted, and in particular to the category and extent of the exclusive rights (Schutzrecht), but it does not establish any legal effects concerning the course of the TFO, as can be seen from the explanations given above on the legal systematics [and in particular the connection] between A 64(1), A 97(4) and A 99(1)(4). Therefore, the Board of appeal agrees with the appellant that the publication of an incorrect B1 specification is a serious mistake of the EPO, but it does not agree [with the appellant’s opinion] that the publication of the incorrect specification establishes a situation justifying legitimate expectations in favour of an opponent, which could hinder the decision to grant from being – even partially – legally effective until the publication of a corrected specification, or justify that a fresh TFO run from the publication of the correction. Therefore, the patent specification can only serve for allowing a first review of the patent but cannot replace the examination of the scope of protection conferred by the granted patent by means of file inspection.

As a consequence, the appellant cannot rely on the application of the PPL [in order to remedy] the fact that the TFO has been missed. Therefore, the opposition was not filed in due time. As the opposition fee has been paid only after the expiration of the nine-month TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence.

Referral of an important point of law to the EBA

[29] Insofar as the appellant has requested that an important point of law be referred to the EBA, the requirements pursuant to A 112(1) are not fulfilled. The request is to be dismissed because the deciding Board of appeal can decide on all the points of law that are relevant for the decision without doubt. The answer to the question on the beginning and, therefore, the end of the TFO directly results from the legal systematics and the wording of A 64(1), A 97(4), A 98 and A 99(1)(4). The same holds true for the lack of legal effect of the publication of a European patent specification on the course of the TFO, on which the Board has decided in agreement with the previous case law (cf. T 438/87). The answer given by the Board to the legal question, i.e. that the failure to meet the TFO cannot be remedied by invoking the PPL if this necessarily entails a violation of the legitimate expectations of the patent proprietor regarding the validity or legal force of the decision to grant, is based on the principle of equal procedural treatment of the parties and is in agreement with the decisions of the EBA G 1/86 and G 5/88 cited above.

Confirmation of the refund of the opposition fee

[30] As the opposition fee has not been paid within the TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence. In view of this legal fiction, there was no cause in law for the late payment of the opposition fee (cf. T 323/87 [5]). An opposition fee paid without cause misses its purpose (Günzel in Benkard, EPÜ, Munich, 2002, §99, marginal number 35). Therefore, the OD was right in ordering the refund of the opposition fee.

Dismissal of the appeal

[31] The appeal is to be dismissed for the relevant reasons given in the impugned decisions. It is only for the sake of clarity in the final treatment of the proceedings that the Board has expressly confirmed the refund of the opposition fee in the order.

ORDER

For these reasons it is decided that:

1. The appeal is dismissed.

2. The refund of the opposition fee ordered by the first instance is maintained.

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