The present case is somewhat unusual. It raises the question whether an applicant has the right to have its application granted before the expiry of the 18-months-period. The treatment of the admissibility of the appeal is also quite interesting.
The application under consideration was filed on July 21, 2011.
On May 7, 2012, the applicant’s representative had a telephone interview with the Examiner. The Examiner appears to have told the representative that in principle there was no obstacle to grant the patent but that he could not do so before having carried out a “topping-up” search in order to detect A 54(3) prior art, in conformity with the Guidelines (C-IV 7.1).
On June 28, 2012, the applicant’s representative repeated the request for an early grant. He pointed out that there was no legal basis in the EPC for refusing a request for an early grant. It was up to the applicant to bear the risk of there being undetected A 54(3) prior art. The representative also invoked a recent article by M. Wilming in epi Information 1/2011, p. 31. He requested an appealable decision and explained that in the absence of such a decision the applicant might file an appeal anyway.
On July 17, the ED sent a communication wherein it explained that the Guidelines were in line with the EPC and that there was no legal basis for an appealable decision.
The applicant then filed an appeal.
How did the Board react?
*** Translation of the German original (available here) ***
Competence and composition of the Board of appeal
[1.1] First it has to be examined to which Board of appeal the EPC refers the present case.
[1.2] The impugned communication deals both with the main request of the applicant to allow the patent to be granted as soon as possible, by immediately issuing a R 71(3) communication, and with the auxiliary request to issue an appealable decision in case the ED was not willing to grant the patent without delay […]. Thus the communication directly concerns the moment at which the ED decides to grant the European patent, i.e. the decision to grant (cf. G 8/95 [4-5]). Therefore, the Board is of the opinion that the impugned communication of the ED concerns the grant of a European patent within the meaning of A 21(3)(a) and that the Technical Board of appeal in its composition pursuant to A 21(3)(a) is competent to decide on the present appeal.
[1.3] In view of the particular nature of the case the Board in the above composition has considered it to be necessary to decide on the appeal in a composition pursuant to A 21(3)(b) (Article 9 RPBA).
Admissibility of the appeal
On the qualification of the impugned decision as a decision
[2.1.1] Pursuant to A 106(1) decisions of the departments referred to in this provision are appealable. In the present case, however, the appeal is not directed against a formal decision but against what the ED has referred to as “communication”. As the term “decision” is not defined in the EPC, the question arises whether the impugned communication, notwithstanding its designation, qualifies as an appealable decision. It has been established in the case law of the Boards of appeal that the answer to this question does not primarily depend on the form or the title of the document, but on its content, which has to be assessed in its procedural context. In particular, a document such as the impugned communication in the present case does qualify as a decision when it finally settles the relevant factual situation with respect to a party.
[2.1.2] In view of its contents, the appellant considers the communication of the ED dated July 17, 2012, to be an appealable decision because it satisfies all the features of an appealable decision cited in decision T 1181/04 [2.4] […].
The Board cannot endorse this point of view. At least two of the four criteria are not satisfied in the present case. The first instance novelty assessment expressly had not been terminated yet, in view of A 54(3) prior art, and thus the factual examination had not yet been terminated, so that the subsequent proceedings did not depend on the decision of the applicant alone.
Moreover, the factual situation of the case underlying decision T 1181/04 significantly differs from the present situation in that the ED already had issued a communication pursuant to A 51(4) EPC 1973 (nowadays, R 71(3)), which, under the circumstances of the case and for the reasons mentioned above qualified as a decision. In the present case, however, the ED had refused to (immediately) issue a communication pursuant to R 71(3). Therefore the question whether (and if so, which of) the cited criteria can be used for the assessment of the admissibility of the appeal, in terms of double relevant facts in civil proceedings, can be left unanswered.
[2.1.3] However, the Board shares the opinion of the appellant that its request for a R 71(3) communication being issued immediately has been dealt with conclusively in the impugned communication and has been refused in a final manner by the ED. This is because, within the framework of the examining proceedings, the ED has made a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).
As this decision has resulted in the refusal of the request of the appellant to have the patent and the rights under A 64 related to it granted soon, [the appellant] is also adversely affected.
Admission of the separate appeal
[2.2.1] Pursuant to A 106(2), a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.
The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed. Rather, the legislator has given the deciding department discretion to decide [on that matter], according to its duties (Travaux préparatoires to the EPC 1973, Report on the second session of the Coordination Committee, May 15-19, 1972, document BR/209/72, point 67).
It is undisputed that a first instance department which, in application of the EPC, has to take discretionary decisions has a margin of discretion which the Board of appeal has to respect. The Board may only should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion cf. G 7/93 [2.5-6]).
[2.2.2] The impugned communication of the ED, which is to be qualified as a decision, does not terminate the examination proceedings with respect to the appellant. The ED has expressly refused the auxiliary request of the appellant for an appealable decision and has justified this by referring to the lack of an appropriate legal basis.
When doing so, it apparently has not sufficiently taken account of the fact that the request of the appellant, to allow the patent to be granted soon, by immediately issuing a R 71(3) communication, could not have been granted in a meaningful way in case a successful appeal had been filed after the final decision on the grant. Thereby it has adversely affected [the appellant] by issuing its communication, in a way that cannot be remedied by means of an appeal after the final decision.
[2.2.3] Nor could the appellant avail itself of another legal remedy provided by the EPC against the impugned communication. Under these circumstances, the ED should have allowed a separate appeal because only an appeal could offer the appellant an opportunity to remedy the adverse effect within the framework of a judicial examination of the refusal of its request. This is all the more so because the EPC does not provide for an appeal against inaction of the EPO (cf. J 26/87).
[2.2.4] Thus the Board comes to the conclusion that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable.
[2.3] As the appeal satisfies all the other requirements of A 106 to A 108 and R 97 and R 99, it is admissible.
Allowability of the appeal
[3.1] A 97(1) regulates the grant of a European patent as follows:
“If the ED is of the opinion that the EP application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant a EP […].”
Thus the grant of a patent presupposes that the ED has reached the opinion that the requirements of the EPC are met. In the present case, however, the ED has expressed in the impugned communication dated July 17, 2012 (point 1) that it was not yet of the opinion that the application under consideration satisfied all the requirements of the EPC, including the requirement of novelty with respect to A 54(3) prior art. Thus it did not have the possibility and the right to proffer the possibility of a grant by issuing a communication under R 71(3). In contrast to the opinion of the appellant, the ED has no margin of discretion in this respect.
Whether the appellant renounces the novelty assessment with respect to A 54(3) prior art and is ready to bear the risk that may result from it, i.e. that the resulting patent is not legally valid, is irrelevant in this context, because this would mean that the applicant had the right to choose whether its application should be examined before grant – and if so, in regard of which requirements. However, there is no support for [this approach] in the EPC. Rather, the EPC provides for a mandatory examination with respect to all the requirements of the EPC before a patent can be granted. It is only when the ED is of the opinion that all requirements that are to be examined are fulfilled that it may arrange for a grant. In this context, it has to be noted that the EPO has to guarantee the interests of both the applicant and the public and that the public must be able to rely on the fact that it actually does. The fact that it often happens that prior art that has not been taken account of during examination proceedings, for various reasons, is cited in opposition proceedings does not alter this duty. The very fact that the opportunity to file an opposition against a granted patent is offered to any person emphasises the interest of the public that only valid rights be maintained and shows that the applicant cannot decide on the requirements of the EPC that are to be used in the examination of its application.
Moreover the requirement of novelty with respect to A 54(3) prior art is not of secondary importance, as the applicant appears to believe. Rather, the requirement of lack of novelty with respect to A 54(3) prior art constitutes both a ground for opposition pursuant to A 100(a) and a ground for revocation pursuant to A 138(1)(a).
[3.2] The argument of the appellant based on A 93(2), which expressly stipulates that the EP application shall be published at the same time as the specification of the EP when the decision to grant the patent becomes effective before the expiry of the 18-month period of eighteen months from the date of filing, cannot succeed either.
As a matter of fact, A 93(2) only regulates the possibility of granting a patent before the expiration of the 18 months. Even if the relevant Travaux préparatoires, the decision T 276/99 cited by the appellant or the Guidelines A-VI 1.1 are taken into account, this provision does not state that the applicant is entitled to having the patent granted at a time and under conditions of its choice. Therefore, the grant of a patent before the expiration of said period is not excluded, provided the ED has reached the conviction that the application satisfies all the requirements of the EPC. However, as this was not the case here, the possibility of granting a patent before the expiration of the 18-month period, which is mentioned in A 93(2), is out of the question. In this context the Board does not see any contradiction between the provisions of A 93(2) and A 97(1).
[3.3] Finally, the appellant points out that to a large extent the EPO was already aware of the unpublished prior rights pursuant to A 54(3) before the 18-month period had expired. As far as PCT applications were concerned, 18 months after their filing or priority date, respectively, it was not established whether they would enter into the European phase within 31 month after their filing or priority date, respectively, and, therefore, become prior art at all. It was only at that later date that a translation was available, without which the contents of PCT applications of e.g. Japanese or Chinese origin – and, as a consequence, their relevance for the novelty assessment – could not be determined.
The Board cannot endorse this point of view. According to A 153(5), in connection with R 165, international applications filed under the PCT constitute potential A 54(3) prior art. If the EPO is not in charge of their treatment during the international phase, then they are only available to the Office after their publication, because the EPO acting as Designated Office does not make use of the possibility of systematic early transmission under Article 13(1) PCT. Thus it is only 18 months after the filing or priority date, respectively, that the ED can have a complete picture of potential prior rights. If under these circumstances it reaches the conviction that the subject-matter of the claims to be examined is novel, then it may issue a R 71(3) communication, without there being any need to wait for a complete translation or an effective entry of the prior international applications into the European phase. To this extent the practice of the EPO not to proffer the possibility of a grant earlier than 18 months after the filing or priority date, respectively is quite understandable under said circumstances.
[4] Moreover, the Board wishes to point out that according to A 99(1) the nine-month time limit for filing an opposition is triggered by the publication of the mention of the grant of the EP in the EP Bulletin. If this moment was situated well before the end of the 18-month period pursuant to A 93(1), then the prior art pursuant to A 54(3) that is relevant for the granted patent would not be completely available to the public at the time of grant. Potentially novelty-destructive prior art would only emerge during the time limit for filing an opposition although it might be relevant in view of the ground for opposition pursuant to A 100(a). This would significantly complicate the assessment of the validity of the patent by third parties, and, consequently, their decision whether an opposition should be filed. In the worst case scenario the time limit for filing an appeal could expire before all A 54(3) prior rights were publicly available, which would constitute a considerable systematic disadvantage and would run counter to the intentions of the legislator regarding opposition proceedings, which have been mentioned under point [3.1]. […]
The appeal is dismissed.
NB: The Board has also prepared take-away headnotes:
When the ED refuses a request that is limited in time (zeitlich gebunden) then it has to allow for a separate appeal if this is the only way to remedy any adverse effect (see point [2.2]).
The decision whether the requirements of the EPC are fulfilled and whether the patent may be granted lies exclusively with the competent ED (see point [3.1]).
The decision whether the requirements of the EPC are fulfilled and whether the patent may be granted lies exclusively with the competent ED (see point [3.1]).
I find this decision quite stimulating. I personally agree with the legal conclusions of the Board, but I also find the applicant's criticism of the Guidelines to be justified: for some mysterious reason, A 93(2) appears to envisage the possibility of a grant before the 18-month time limit, whereas the Guidelines seem to prohibit it. This has a slight ultra vires flavour.
Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.
Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.
14 comments:
An argument in favour of early grant now cut off by the TBA by that decision is one of the fundamental rationales behind the patent system: you get protection in return of disclosure of the invention. Publication after 18 Mt breaks that principle, I know, and that's fine. If you hesitate between keeping secret and disclosing, and only want to disclose if you get the patent, then the EPC route is not the way to take any more, since this decision tells us that you won't get grant before 18 Mt. This is an argument against using the EPC system, and that's pretty sad. Mind you wasn't there an EQE question a few years ago where an EP patent was granted before 18 Mt...
I don't see the point in the previous comment, I'm afraid I miss something. To me it looks like it is the other way around: if you get a patent for a disclosed invention, then since disclosure comes after 18 months you cannot get a patent before!
By the way, in the Guidelines in A VI 1.1 the wording is very similar to Art. 93(2) and it does not exclude a grant before the 18 months. It is in C VI 7.1 where it is clearly said that grant should be postponed until the top up search can be completed.
One case both of these can be satisfied is with a divisonal: it gets the filing date of the parent and when the search is done then all the 54(3) docs are published...
Many Americans see the patent system as a Quid pro Quo in which the State gives you exclusive rights and, in return, you provide an enabling disclosure. They think the QpQ is dishonoured in any system which requires the inventor to acquiesce in A-publication BEFORE she knows whether she is going to get a patent or not.
Under the EPC, the UK Patent Office will grant early, without insisting on a top-up search first. I will have now to read this EPO Decision to see where the UK is doing it wrong.
I think the Decision could have been more felicitously expressed by pointing out that it is the Art 94(1) duty of the ED to check that all provisions of the EPC are satisfied. Until it has examined all Art 54(3) art it has not yet done its duty. Only when it has discharged this duty can it then decide (Art 97 EPC) to grant.
Max: The UKIPO will generally not allow early grant without at least a top-up search. See the Manual of Patent Practice, Section 18.07.1, concerning requests for accelerated examination:
"A report should issue confirming whether the request is allowable or not. If a request for accelerated substantive examination is allowed, the report should state that substantive examination will proceed as quickly as possible, but that no report under s.18(4) will normally issue until at least three months after the application has been published under s.16 so as to allow time for third parties to file observations under s.21 and for updating the search."
http://www.ipo.gov.uk/practice-sec-018.pdf
Then, if the search is still not complete at expiry of this period, the Examiner must diary potential post-grant action under s.73, with reference to Section 17.118 of the MOPP:
"When an application is sent to grant before 21 months or the substantive examiner is not otherwise satisfied that the supplementary search is complete for art in the s.2(3) field, the application should be diaried for return at some appropriate date after grant for the search to be completed and the applicant informed accordingly. If a document forming part of the state of the art by virtue of s.2(3) comes to the notice of the substantive examiner after the issue of a report under s.18(4), action may be taken under s.73(1) after grant (see 73.02-73.03)."
http://www.ipo.gov.uk/practice-sec-017.pdf
Of course, the action under s.73 will be to require Proprietor to amend, or otherwise to revoke, the granted patent post-grant.
The EPO cannot initiate Opposition proceedings of its own motion; it can only carry them on once initiated. The difference, then, between the UKIPO and the EPO is that the EPO must wait before grant until it has all the facts, since it has no way of forcing Proprietor to amend after grant if prejudicial 54(3) art is uncovered.
If you hesitate between keeping secret and disclosing, and only want to disclose if you get the patent, then the EPC route is not the way to take any more, since this decision tells us that you won't get grant before 18 Mt.
Are you aware of Art. 67(1) and (2) EPC? Note that an applicant can ask for early publication, Art. 93(1)(b) EPC.
Of you course if you don't want patent applications to be examined, the EPC route is not and has never been for you. That has nothing to do with this decision.
When the ED refuses a request that is limited in time (zeitlich gebunden) then it has to allow for a separate appeal if this is the only way to remedy any adverse effect (see point [2.2]).
So an ED (and I suppose OD) refusing a request for postponement of an OP (to give just one example) now must allow for a separate appeal? Does the Board think it can deal with such appeals in a useful manner?
I wonder if there is any other case where a Board decides that a decision that does not allow for a separate appeal should have allowed for a separate appeal, and then allows the appeal anyway. In my view, if a decision does not allow for a separate appeal, a Board has no choice but to declare the appeal inadmissible. A Board has no discretion regarding admissibility.
I believe the current appeal system was never designed to provide "preventive protection" against ill-behaved EDs. If an applicant is not happy with how the ED runs the procedure, he can file a complaint with the EPO. If the procedural irregularity potentially affects the outcome of the procedure, then that can be corrected through an appeal.
Time lost is lost forever, but there is Art. 67.
There is a misunderstanding I believe as concerns the statement: "If you hesitate between keeping secret and disclosing, and only want to disclose if you get the patent, then the EPC route is not the way to take any more, since this decision tells us that you won't get grant before 18 Mt." and of course it has something to do with that decision, importantly so!: Look at the old US system, the patent was only published once it was granted. This was a fair deal between society and the inventor, as you only had to disclose the invention once you knew you would actually get a patent and the corresponding protection. This has changed in the interest of third parties, now the inventor has to disclose (publication after 18 Mt) even if at the end he doesn't get anything patented. If it is possible however (as it is before the DPMA and the USPTO, mind you) to go through examination within less than 18 Mt the old way is still possible, and you can decide to withdraw your application and keep it secret if at e.g. 16 Mt you realize you likely won't get protection. This is not possible after that decision before the EPO.
I just wonder whether a technical broad of appeals was indeed competent to decide on the matter under the provisions of Article 21(3) EPC. This is not an appeal against a decision to grant, a refusal, a limitation or revocation and therefore a Legal board of appeals should have been appointed instead according to 21(3)(c) EPC. This case is somehow similar the case that lead to the G1/11 referral where the technical board considered itself not competent for deciding on an interlocutory decision regarding the refund of non unity search fee.
Anon said:
'Look at the old US system, the patent was only published once it was granted. This was a fair deal between society and the inventor, as you only had to disclose the invention once you knew you would actually get a patent and the corresponding protection. This has changed in the interest of third parties, now the inventor has to disclose (publication after 18 Mt) even if at the end he doesn't get anything patented.'
A counterargument:
If he doesn't get anything patented, this is usually for novelty/IS reasons.
This means he didn't disclose anything (at least nothing worthwhile), he merely reinvented old stuff.
So what exactly has he lost in terms of disclosure?
and of course it has something to do with that decision
I beg to differ. In the present case the applicant already knew he was most likely going to get the patent. He just wanted to have it NOW instead of waiting a few more months.
If you take issue with the obligatory publication after 18 months (unless the applicant withdraws in time), then that is fine with me, but this decision has little to do with it.
18 months is often too short to have any guarantee on whether a patent will be granted, but in most cases the applicant will at least have the search report and the search opinion to make up his mind on whether to go ahead or prevent publication.
If it is possible however (as it is before the DPMA and the USPTO, mind you) to go through examination within less than 18 Mt the old way is still possible, and you can decide to withdraw your application and keep it secret if at e.g. 16 Mt you realize you likely won't get protection.
If you manage to get an application close to refusal after substantive examination at the EPO before 18 months are over, you can of course prevent publication. I suppose this is just as exceptional at the EPO as it is at the DPMA and the USPTO.
At all of these offices the applicant might be informed that the application is allowable before 18 months are over. The only difference is that the EPO will, very correctly, delay the grant until the relevant Art. 54(3) prior art is available and can be checked. Of course this will sometimes result in a different outcome of the procedure, but an applicant has no legitimate interest in having an invalid patent granted to him.
Myshkin wrote
'The only difference is that the EPO will, very correctly, delay the grant until the relevant Art. 54(3) prior art is available and can be checked'
Should they not wait 31m then? There may always be a PCT application in an exotic language that will enter european phase after 31m, and only then becomes 54(3) PA, or not?
All PCT filings are published as a WO after 18 months. So a definitive top-up search can be run then and, if it yields a clean result, grant the patent.
People who want to hide their inventions, somewhere in their WO publication, so they are not found in the top-up search, can do so. it follows that there is no guarantee that every claim in every B1 publication is valid, even after a top-up search has been performed. It is nice though that the EPO makes reasonable efforts to ensure that every issued claim is a valid claim.
Of course, when the courts looking at the validity of granted European patents ignore the objective EPO approach to the assessment of obviousness, and instead do it subjectively, we do then lose a degree of legal certainty about the validity of those patents.
The WO documents are published at 18 months and can be searched then. I guess that if a relevant document is found at that stage and has the EP as designation, then the grant will be delayed until it is clear whether it will enter examination. But this will be a very rare case.
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