Friday, 14 September 2012

T 506/08 – Not My Business

This decision – which Manolis mentioned in a comment recently – deals with the refusal of a Euro-PCT application by the Examining Division (ED).

The application concerned a method for carrying out an electronic auction in a communication network.

In December 2001, the EPO acting as ISA informed the applicant that it would not establish an ISR because it had been unable to spot a technical problem the solution of which could involve an inventive step.

In April 2002, the EPO acting as IPEA reimbursed two thirds of the examination fee.

After the application had entered the European phase, the ED reiterated the objections. The applicant filed amended claims and requested the ED to carry out a search.

In 2007, the ED refused the application and the applicant filed an appeal.

Among other requests, the appellant asked the Board to refer the following questions to the Enlarged Board (EBA) (my translation):

1. Is reimbursement of fees only possible if there is an explicit situation where a provision stipulates the reimbursement (J 3/09) or are fee payments that fall short of the purpose defined in the criteria for fee payment (here: Rule 16.1 PCT: “… for carrying out the international search”) always to be reimbursed unless there is an explicit prohibition to reimburse them (J 6/83)?

2. Is A 125 applicable to acts of the EPO performed during the international phase of a PCT application, e.g. when it is acting as ISA?

3. Does the principle prohibiting unjust enrichment – which is acknowledged in all Contracting States – constitute a basis for requesting reimbursement (application of A 125) when a purpose of the fee mentioned in the criteria for fee payment (here: carrying out an international search) is not or not entirely fulfilled (fee payment without any legal basis)?

In its decision the Board found all requests on file to lack inventive step. It refused to remit the case to the first instance because it was of the opinion that the ED’s refusal of a further search was justified. The Board then dealt with the request to refund the international search fee:

*** Translation of the German original ***

Lack of competence of the Board of appeal

[13] In the present case the EPO has not carried out a search during the international phase but has made a standardised declaration that no search would be carried out. During the European phase, the EPO has not carried out a further search (Nachrecherche) either. This is the reason for the appellant’s request for a – possibly partial – reimbursement of the search fee that had been paid to the EPO during the international phase.

As the Board does not remit the case to the ED, it is certain that there will not be any further search.

However, the Board does not consider itself to be competent to decide on a request for (partial) reimbursement of the international search fee in a case where no search has been carried out.

[13.1] The appellant’s central argument consists in that there had to be a legal recourse (Rechtsweg) allowing to judicially review acts performed by the EPO acting as international PCT authority (guarantee of judicial review – Rechtsweggarantie) and that, therefore, the Board had to be competent for reviewing the relationship between [the payment of] the international search fee and the actual service in return (Gegenleistung).

The Board is aware of the existence of the fundamental right consisting in the guarantee of judicial review in the Contracting states of the EPC (see G 3/08 [7.2.1]: “verifiability of all state action”; [7.2.2]: “guarantee [of] the due process of law within the Organisation”). The judicial review for which the Board is competent has indeed taken place, i.e. the [review] whether under the applicable criteria of the EPC the EPO was right or not to refuse to carry out a search in the present case and whether, accordingly, a search was unnecessary or required. The review corresponds to [the finding of] the case law according to which the Boards of appeal can only provide legal remedies (Rechtsschutz bieten) offered under the EPC in the European phase and remediate the consequences of a decision of a PCT authority on the regional level (J 20/89; J 4/94).

However, the guarantee of judicial review does not mean that any claim against the EPO the recourse is to be dealt with by the Boards of appeal (see e.g. J 14/87 [13, reference to A 9 EPC 1973]).

[13.2] It is undisputed that there is no explicit legal basis for a (partial) reimbursement of the international search fee in case [the ISA makes] a declaration that no search will be carried out. Neither the PCT nor the Agreement between the European Patent Organisation and the WIPO dated October 31, 2001 and which has been updated several times (see in particular its Annex C, part II) provides anything on a reimbursement in such a case, nor is there a respective decision of the President of the EPO (such as for the partial reimbursement of the fee for the IPE, OJ EPO 2001, 539).

The Board wishes to add that the international search fee has not been paid “without any cause” (“grundlos”) but fell due together with the international filing fee (Rule 16.1 f and 15.4 PCT). Therefore, in the present case Annex C, part II, paragraph 1 of the Agreement does not establish a situation (Tatbestand) where reimbursement of the international search fee is required, either.

[13.3] As a consequence, the Board is of the opinion that the appellant’s request for a review aims at having the Board interfere in the PCT rules related to fees (e.g. Rule 16.2 or 16.3 PCT) or in the Agreement between the EPO and the WIPO (Annex C, Part II) in order to establish situations where fees are to be reimbursed (Gebührenerstattungstatbestand), in particular in the case of a standardised declaration that no search will be carried out, so as to alleviate a fee-related situation (Gebührenkonstellation) that is perceived as being unjust.

However, the Board does not consider itself to be entitled to interfere in this way, irrespective of whether the lack of [provisions establishing] a situation where reimbursement is required (Erstattungstatbestand) is the result of an intended or unintended historical development of the provisions and agreements of the PCT.

[13.4] Under A 21(1) EPC 1973 the Boards of Appeal are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions, Opposition Divisions and of the Legal Division.

It follows that Boards of appeal cannot interfere in decisions of the PCT Contracting States or the Agreement between the EPO and the WIPO because such an Agreement is within the responsibility of the Administrative Council (AC) of the European Patent Organisation, who can authorise the President of the EPO to negotiate and, with its approval, to conclude agreements on behalf of the European Patent Organisation with intergovernmental organisations (A 33(4) EPC 1973 and 2000).

The competence for establishing new criteria for fee reimbursements lies with the above mentioned decision makers, the decisions of whom are outside the competence of the Board of appeal. It is true that the EBA has stated that the powers of the AC are limited by the EPC (and by doing so, reviewed a decision of the AC): the AC must not create regulations that would contradict the provisions of the EPC itself (G 6/95 [4]), but in the present case such a contradiction has not been substantiated (dargetan) nor is it apparent.

[13.5] A 125 EPC 1973 only allows the Board to take into account generally recognised principles of procedural law in order to complement [the provisions of the EPC] but does not confer it competence regarding rules relating to fees.

[13.6] Another argument of the appellant is based on the requirement of equal treatment of European and international applications. If an application was filed directly as a European application and no search was carried out, the European search fee had to be at least partially reimbursed because Article 9 of the Rules relating to fees of the EPC clearly was based on the principle that the amount of the search fee should correspond to the efforts made by the EPO.

The Board and the appellant agree that there is no precedent in the case law of the Boards of appeal which would answer the legal question of whether in the case of a direct European application a declaration that no search will be carried out (R 45 EPC 1973 or R 63) could make it necessary to reimburse the European search fee in its entirety or in part. As the appellant’s comparison (Vergleichsfall) is clearly hypothetical, [the Board] cannot see any unequal treatment.

[14] As the Board is not competent for deciding on the request for (partial) reimbursement of the international search fee in a situation where no search has been carried out, this request is inadmissible.

[15] The legal questions formulated by the appellant in view of a referral to the EBA concern the substantive (inhaltlich) treatment of the above mentioned request. As the Board considers the request to be inadmissible, it will not refer these questions to the EBA because [the answer] is not relevant for the decision.

For the same reason a detachment and transfer (Abtrennung und Abgabe) of legal questions to the Legal Board of appeal is also excluded. […]

The appeal is dismissed.

The request for reimbursement of the international search fee is dismissed as inadmissible.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.