Although the Boards have made clear, again and again, that the provisions of the EPC do not apply to the Extension Ordinances and that there is no right to appeal in respect of extensions, sometimes applicants still try … and invariably fail.
The Euro-PCT under consideration was filed on March 14, 2008. The applicant requested entry into the European phase with letter of 12 October 2009. All (then) EPC Contracting States were designated and the respective fees were paid but no extension of the European patent was claimed.
With letter dated December 9, 2009, the [applicant] designated four extension states (Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia, and Serbia) and asked for the debit of the extension fees and late payment surcharges. Those payments, one of which titled as “fee for further processing (late payment of a fee)”, were made the same day.
Concerning the late designation of extension states and late payment of extension fees, the [applicant] argued that the “grace period system” pursuant to R 85a(2) EPC 1973, referred to in Article 3(2) of the extension ordinances, were still in place regardless the deleting of that rule by way of the EPC 2000 reform. According to the applicant, the unilateral removal of that rule by the EPO effectively constituted an intervention in the sovereign rights of the extension states. The [applicant] requested an appealable decision.
On June 10, 2010, the Receiving Section (RS) sent a reasoned communication pursuant to A 113. It informed the [applicant] that the “grace period system” according to R 85a(2) EPC 1973 had been replaced by the remedy of further processing under A 121, and it considered the [applicant’s] earlier letter as such a request.
However, A 121 was only applicable in cases where both designation fees and extension fees had not been paid in due time and a loss of rights communication under R 112 was issued. In other cases, in particular where the designation fees had been paid in time or where an applicant waived the right to receive a communication according to R 112, no possibility to pay extension fees was available any more. Since no such communication was issued, the RS rejected the [applicant’s] request for further processing under A 121 for late payment of extension fees as inadmissible.
The applicant maintained its request for an appealable decision in relation to the payment of the extension fees. In addition to this, it argued that in view of the Notice from the EPO dated 2 November 2009 concerning the re-introduction of a grace period for the payment of extension fees (OJ EPO 2009, 603), applicable to applications for which the basic time limit for payment of designation fees expires on or after 1 January 2010, the EPO’s refusal to accept the [applicant’s] payment of the extension fees led to an inequitable situation.
The RS then issued an appealable decision and the applicant filed an appeal.
[1] The appeal is formally directed against the decision of the RS dated 10 March 2011 rejecting both the [applicant’s] request for a decision pursuant to R 112(2) in its favour and its request for further processing under A 121 for the designation of extension states and payment therefore with surcharge concerning the European patent application No. 08 743 872.7.
In essence, the [applicant] requests that the late designated extension states Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia and Serbia be added to said European patent application.
[2] The appeal was filed, and the appeal fee was paid within two months of the date of notification of the decision, alleged by the [applicant] to be appealable (A 108).
[3] As noted by the Legal Board of Appeal in its communication dated 28 December 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS to accept a late designation of extension states 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 European Patent Organisation (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 and following a recent decision taken by the Legal Board of Appeal in case J 22/10, the Board observes that 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; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia, OJ EPO 2004, 5[6]3, 2007, 406) 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.
[3.3.1] 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 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.
[3.3.2] 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] Thus, apart from the fact, that A 121 and R 112 are not applicable to cases where (only) the due designation of extension states and the payment of extension fees was omitted, the Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system.
[4] This has been brought to the [applicant’s] attention by way of the communication of the Board dated 28 December 2011 to which the [applicant] 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 10 March 2010, rejecting the [applicant’s] request for a decision pursuant to R 112(2) in its favour and its request for further processing under A 121 for the designation of extension states and payment thereof with surcharge, and [applicant’s] request that the late designated of extension states Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia and Serbia be added to said European patent application No. 08 743 872.7 are not open to an appeal according to A 106 the appeal has to be rejected as inadmissible.
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