On July 5, 2011, the Examining Division (ED) posted a communication under R 71(3) EPC, informing the applicant that the main request on file did not comply with A 84 but that it intended to grant a patent on the basis of the first auxiliary request (with claim 9 amended by the ED).
On November 4, 2011, the applicant filed electronically a letter which reads as follows:
“In response to the Communication under R 71(3) dated 5 July 2011, we enclose French and German translations of the claims. Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number ….
We look forward to receiving notification of the decision to grant.”
On November 11, 2011, at 15:33 hours, the applicant filed electronically a further letter in reply to the EPO communication under R 71(3) dated 5 July 2011, together with an amended set of claims 1 to 12 and French and German translations thereof. In this letter the applicant stated that the letter dated November 4, 2011, and the French and German translations attached thereto were withdrawn and under R 71(4) also requested voluntary amendments of the claims under R 137(3) and gave explanations regarding these amendments.
The letter further reads on page 1, fourth paragraph:
“Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number …. The applicant approves the text for grant as amended.”
The decision to grant a European patent was posted on November 17, 2011.
The footer of this automatically created decision to grant reads: “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added).
The footer of the attached “Note relating to the decision to grant a European patent” (EPO Form 2006R) reads: “EPA/EPO/OEB Form 2006R 12.07” and “08162496.7 (11.11.11) (emphasis added).
By a communication (EPO Form 2085) dated November 21, 2011, the applicant was informed that the request for amendment of November 11, 2011 had been received on November 11, 2011, but had reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service and that, as the EPO was bound by its decision, the requested amendments could no longer be considered. Additionally, the applicant’s attention was drawn to the possibility of appeal against the decision to grant. The applicant availed itself of this possibility.
The applicant inter alia pointed out that, according to G 12/91, the date on which proceedings before the ED were completed was three working days before the date (November 17, 2011) stamped on the decision, i.e. in the present case November 14, 2011. The date on which proceedings before the ED were completed was after the date (November 11, 2011) on which the applicant requested amendments to be considered by the ED. Therefore the ED should have considered the requested amendments and the applicant had a legitimate expectation that they would be considered.
[2] The appellant argues that, pursuant to R 71(4) (and R 71(5), if necessary), the ED should have taken account of the amendments filed with the EPO at 15:33 hours on 11 November 2011, since at that point in time the ED had not yet completed the decision-making process following written proceedings. The essential question therefore is when exactly the proceedings before the decision-making department of first instance had been completed in the present case.
[3] In its decision G 12/91, the Enlarged Board of Appeal (EBA) decided that the decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section (see Order and Headnote). The EBA based its decision on the fact that, when a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it, and that this moment marked the completion of proceedings before the decision-making department (G 12/91 [9.3]).It further held that once proceedings have been completed the decision-making department can no longer amend its decision but must disregard any fresh matter the parties may submit to the EPO thereafter (G 12/91 [9.3]). According to established jurisprudence this finding applies to decisions of opposition divisions (OD) and ED (see e.g. T 556/95, T 798/95, T 394/96 and T 355/03).
[4] It follows from the above that, for determining the completion of proceedings before the decision-making department, it has to be established when the decision was handed over by the formalities section to the EPO postal service for notification.
[5] The appellant submitted that, in accordance with established case law (G 12/91 [9.1]; T 556/95 [6]; T 394/96 [4]) as well as with established EPO practice, the date of termination of proceedings was three days prior to the date of actual despatch of the decision which was stamped in the box marked “Datum/Date” at the upper right-hand side of the decision, irrespective of the date appearing in the box marked “to EPO postal service” appearing in the footer of the decision.
[6] The board, however, is of the view that, if it is clearly indicated in the decision on which date the formalities section handed the decision over to the EPO postal service, this date is directly brought to the knowledge of the parties and is thus the date on which written proceedings before the decision-making department are completed. This conclusion is in line with the findings in decision G 12/91 for the following reasons.
[7] According to the facts underlying the referral decision in case G 12/91, it was not indicated in the decision of the first-instance department on which date the formalities section had handed over the decision to the EPO postal service (see G 12/91 [II]). At that time, this date was never indicated in the EPO decisions despatched to the parties or otherwise discernible for the parties. Only the date on which the decision was to be despatched was stamped on the decision.
- Point [VI] of the Summary of Facts and Submissions:
This section concerns the reply of the President of the EPO who had been asked by the EBA to outline EPO practice at that time with regard to decisions following written proceedings before the OD. According to the submissions of the President of the EPO, at that time only two dates were important with regard to the taking of a decision of an OD. The first date was the date on which the decision was signed by the members of the OD; this was indicated in the original copy of the decision (Form 2339), which was kept on file. This date was usually not communicated to the parties, unless a party questioned whether the composition of the OD was correct. The second date was the date on which the decision was to be despatched and which was entered in the decision notified to the parties. This date was of more importance to the parties because it indicated at what point in time the EPO had posted the decision, the point which under R 78(3) EPC 1973 was decisive for calculating time limits. To ensure that the date entered in the decision was indeed the date the decision was actually posted, decisions were systematically post-dated by three days. This practice was established by DG 2 Staff Notice 1/88-III dated 22 February 1988. If the decision could not be despatched on that date as intended, the EPO postal service returned it to the OD’s formalities officer for the date to be changed accordingly.
- points [9] and [9.1] of the Reasons which read:
“[9] This only leaves date 4.(c), the date on which the date-stamped, post-dated decision is handed over to the EPO postal service by the formalities section.[9.1] At first sight, the fact that it is not directly brought to the knowledge of the parties would seem to militate against choosing this date. On the other hand it is a date the parties can ascertain very easily, because, as the President of the EPO explained, it is always three days prior to the date stamped. Internal EPO instructions make clear that a period of three days always elapses between the date-stamping of a decision and its despatch. If, for whatever reason, the EPO postal service is unable to despatch the decision on the date stamped, it returns the decision to the formalities section where it is given a new date, which again pre-dates the date of actual despatch by three days. This practice ensures that the date of despatch is always stamped on the decision three days before it is actually despatched. This date is therefore very easy to ascertain, both for the EPO and the parties. It thus fulfils the need for strict legal certainty which the handing down of a decision must ensure.” (emphasis added by the board)
- point [9.3] of the Reasons which reads:
“… Seeing that it is important for the parties to know at which point in time the decision-making process following written proceedings is completed, this point in time should be clearly indicated in the decision. The formalities section should also keep a register of the dates on which decisions are handed over to the EPO postal service to enable these dates to be ascertained at any time.” (emphasis added by the board)
[9] The EPO followed the first of the above recommendations of the EBA and added the following text to the decision forms of the first-instance departments: “to EPO postal service: …”. This text was added at least as from 7 February 1995, as can be seen from the first-instance decision underlying case T 556/95.
[10] In the present case, the wording of the footer of the decision to grant posted on 17 November 2011 reads “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added by the board) and thus clearly indicates that this decision was handed over to the EPO postal service on Friday, 11 November 2011. That on this date the appealed decision was handed over to the EPO postal service is also clear from the footer of the “Note relating to the decision to grant a European patent (EPO Form 2006A) which reads: “08162496.7 (11.11.11)” (emphasis added by the board).
[11] On the basis of these facts and the board’s view given above (see in particular point [6] above), the board concludes that in the present case the decision-making process following written proceedings was completed on Friday, 11 November 2011.
[12] However, since the applicant filed electronically its letter containing a request under R 71(4) at 15:33 hours on Friday, 11 November 2011 […] and thus on the same date on which the decision was handed over to the EPO postal service, the question arises whether the chronological order of events on that date could lead to the conclusion that the decision-making process following written proceedings had not yet been completed in the present case when said letter was received by the EPO.
“The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section.” (emphasis added by the board)
According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date. This would mean that the applicant’s request under R 71(4) should have been filed with the EPO at the latest one day before 11 November 2011, i.e. the date on which the decision-making process was completed, in order to be considered by the ED.
[14] But one could also argue in favour of the appellant that the chronological order of events on 11 November 2011 must be taken into account, in view of the finding of the EBA in point [9.3] of its decision G 12/91 which reads:
“When a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it. This moment marks the completion of proceedings before the decision-making department. Once proceedings have been completed the decision-making department can no longer amend its decision. It must disregard any fresh matter the parties may submit to the EPO thereafter.” (emphasis added by the board)
[15] However, even if the chronological order of events on 11 November 2011 were taken into account in the present case, the applicant’s letter was filed after the decision was handed over to the EPO internal postal service. According to the published official opening hours of the EPO’s Munich site, which are the only relevant opening hours because the ED in the present case was located in Munich, the applicant’s letter was filed after the end of the official working time and thus after the completion of the proceedings before the ED.
This is also confirmed by the communication (EPO Form 2085) dated 21 November 2011, informing the applicant that the request for amendment of 11 November 2011 was received on 11 November 2011, but reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service.
[16] Since the applicant’s letter dated 11 November 2011 was filed after the completion of the proceedings before the ED, the ED was not competent to consider this letter even if, as submitted by the appellant, it contained a request under R 71(4) (see G 12/91 [9.3]; T 798/95 [6]; and T 355/03 [2]).
[17] It follows from the above that, in the present case, the fact that the applicant’s letter dated 11 November 2011 was not considered by the ED does not give rise to a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA. Nor does it constitute a substantial procedural violation within the meaning of R 103(1)(a).
[18] In view of the above, the appeal must be dismissed and the appeal fee cannot be reimbursed.
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