J 8/09 – Out Of Proportion

This decision is a good reminder of some principles that apply to requests for re-establishment.

The applicant appears to have acted on his own, without any professional help. As is often the case in this configuration, the applicant forgot to pay a renewal fee.

To be more precise, the renewal fee for the fourth year, which fell due on 30 November 2007, was not paid. By a letter dated 4 January 2008 the EPO drew the appellant’s attention to the possibility of paying the fee plus an additional fee within a grace period of six months (R 51(2)). Since no fee was received a “Noting of loss of rights under R 112(1)” communication was sent on 10 July 2008, informing the appellant that the application was deemed to be withdrawn and that he might request reestablishment of rights. The communication was returned undelivered to the EPO and re-sent first on 7 August 2008 and again on 5 September 2008. On 16 September 2008, an employee of the EPO telephoned the appellant concerning a payment made by him which could not be allocated to a specific file. In that conversation he was at his request told how to apply for re-establishment of rights. By a letter dated 24 September 2008, received at the EPO on 13 October 2008, the appellant requested reestablishment of rights and paid all the relevant fees.

[4.1] Under A 122(1), an appellant for a European patent, who in spite of having taken all due care required by the circumstances, was unable to observe a time limit vis-à-vis the EPO which has the direct consequence of causing in particular, the deeming of the application to have been withdrawn, shall upon request have his rights re-established.

[4.2] In considering whether “all due care required by the circumstances” has been taken, the circumstances of each case must be taken as a whole (see T 287/84) and must be judged in view of the situation existing before the time limit expired. That means the measures taken by the party to meet the time limit must only be judged with regard to the circumstances as they were at that time.

Not disregarding the fact that the appellant is an individual appellant acting in person, i.e. without the help of a professional representative, the Board must take into consideration whether he exercised the required care in the course of all the procedural steps to ensure that he did what was necessary in time to avoid any loss of rights (see J 27/01 [3.3.1]).

In this respect, the fact that the appellant is a surgeon without any specific knowledge about procedure and formalities under the EPC does not constitute a ground for re-establishment of rights.

In general, a mistake or ignorance of the law is an insufficient ground for re-establishment: see J 5/94 [3.1], J 27/01 [3.3.1], J 2/02 [8] and J 6/07 [2.4-5]. In the last cited decision, this Board expressed the view that

“Taking of due care requires that a person engaged in proceedings before the EPO, even when a layman, should acquaint himself with the relevant rules”

and further that

“The requirement to take all due care means that he must take all possible steps to ensure that he can do, properly and punctually, whatever is required during the grant procedure to prevent any loss of rights.”

Accordingly, the circumstance that the appellant was absent from his usual residence between 1 January 2006 and 30 June 2008 because he was then working in Aveiro, in the North of Portugal, does not play any relevant role in the present case. The Board can understand that this period of time was a specially difficult one for the appellant and also that it could have caused some disruption in attending to his personal affairs. However, these explanations are all related to the fact that the appellant was waiting for a reminder from the EPO which he never received (namely the letter dated 4 January 2008 ) and not to his awareness of the due date for the payment of the renewal fee.

As already stated by the Examining Division (ED), following established case law, the Notice drawing attention to the due date for the payment of the renewal fee is a voluntary service on the part of the EPO and no claim for re-establishment can be derived if the EPO fails to issue or if an applicant fails to receive such a communication. Consequently, the argument based on the reliability or otherwise of the Portuguese postal service is not relevant either.

[4.3] As correctly stated by the ED, the appellant did not provide any information regarding his system for monitoring fee payments, so the Board cannot assess whether this system, if any, is efficient enough to avoid undue delay.

[4.4] The circumstance that the appellant filed a second and later patent application is also irrelevant insofar that there is no evidence in the file that, for instance, the appellant paid renewal fees for one application instead of the other, or in any way made a mistake based on actual confusion between the two applications.

[4.5] Concerning the principle of proportionality, the appellant relies on the fact that the present patent application is the subject of an agreement with a Swiss company which is already producing the system to which the application relates and argues that, since the loss of rights would jeopardise the production, the consequence of a single late payment of the renewal fee would be disproportionate. In his latest submission he added that this company refuses now to pay royalties and is trying to copy the system using another name.

The Board agrees with the appellant that the principle of proportionality can be defined as a duty for a court or an administration to find a balance between a party’s error and the legally ensuing consequences when a margin of weighing the importance of the circumstances exists (see J 5/97 [5]).

However, when the Boards of Appeal refer to the principle of proportionality in the case law, it is never as a main ground but in support of other grounds already substantiating, to a certain extent, the allowance of the appeal especially when a reliable system for managing the time limits and an isolated mistake within such a system can be assessed (see J 44/92 and J 48/92).

As already stated above […], the Board cannot find in the submissions of the appellant any description of a system for managing the time limits for the payment of fees. Since the appellant fails to place the Board in a position to assess the reliability of any such system, the Board is unable to assess whether an error in such a system could be treated as an isolated mistake so as to allow re-establishment. For these reasons, the principle of proportionality does not apply in the present case. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.

T 1423/07 – Double Patenting And Internal Priority

The present decision deals with the refusal of an application on the ground of unallowable double patenting. I owe the knowledge of this decision – which is not yet available on the DG3 site – to the EPLaw Patent Blog.

[2] In the present case, the double patenting arises from a European application (= contested application) which claims priority from an earlier European application which was granted (= document D1). The claims of the two documents are identical and all the Designated Contracting States of D1 are also designated in the contested application.

[2.1] The examining division (ED) refused the application on the basis of the Guidelines. The relevant passage C-IV, 6.4 (June 2005) reads as follows:

“The EPC does not deal explicitly with the case of co-pending European applications of the same effective date. However, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention [emphasis added by the board]. It is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions. However, in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fees) and the claims of those applications have the same filing or priority date and relate to the same invention (the claims conflicting in the manner explained in VI, 9.1.6), the applicant should be told that he must either amend one or more of the applications in such a manner that they no longer claim the same invention, or choose which one of those applications he wishes to proceed to grant. Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist.”

The EPC does indeed not contain any explicit provision which would prohibit double patenting. By invoking an “accepted principle in most patent systems that two - patents cannot be granted to the same applicant for one invention”, the above passage of the Guidelines makes reference to A 125 as a basis for not allowing double patenting. Therefore what has to be evaluated is whether a European application can be refused for double patenting on the basis of A 125.

[2.2] A 125 stipulates that 

“in the absence of procedural provisions in this Convention, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States”. 

This means that in order to base the refusal of a European application on A 125, each of the following criteria must be met: 

(a) it must be a matter of procedural law;

(b) the principles of general law invoked must be generally recognised in the Contracting States;

(c) there must be an absence of procedural provisions in the EPC.

Re (a): 

[2.2.1] In decision T 587/98, which concerns double patenting arising from a divisional application, the board concluded that A 125 was not applicable, as prohibition of conflicting claims would be a’ matter of substantive law rather than a matter of procedure (see [3.6] of the reasons). However, double patenting also comprises procedural aspects. Reference is made to the minutes of the Munich Diplomatic Conference of 1973, M/PR/I, point 665, page 62, which confirm the procedural aspects of double patenting. The relevant passage reads as follows:

“In connection with A 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.”

The board concludes that refusal of a European application for double patenting comprises both procedural aspects as well as matters of substantial law so that A 125 is applicable.

Re (b): 

[2.2.2] The evaluation of the principles of general law generally recognised in the Contracting States reveals that the majority of the Contracting States do not allow double patenting in a situation where there is both a national patent and a European patent designating the same Contracting State. Thus, section 73(2) of the UK Patents Act 1977 reads:

“If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.”

In France, this situation is governed by Article L 614-13 of the Code de la Propriété intellectuelle:

“Where a French patent covers an invention for which a European patent has been granted to the same inventor or to his successor in title with the same filing date or the same priority, the French patent shall cease to have effect at either the date on which the period during which opposition may be filed against the European patent expires without opposition having been filed or the date on which the opposition proceedings are closed and the European patent is maintained. However, where a French patent has been granted at a date later than either of the dates, as appropriate, laid down in the foregoing paragraph, such patent shall not take effect. The subsequent lapse or annulment of the European patent shall have no effect on the provisions of this Article.”

Most Contracting States have provisions similar to the French law, i.e. the national patent ceases to have effect in case of double patenting with a European patent. These Contracting States include Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Estonia, Germany, Greece, Italy, Latvia, Liechtenstein, Luxembourg, Malta, Monaco, the Netherlands, Portugal, Romania, Slovakia, Slovenia, Spain, Switzerland and Turkey. Double patenting in this situation is also not allowed in Ireland where, as in the United Kingdom, the national patent is revoked in such a case, and in Macedonia as well as in Lithuania. In Austria, Denmark, Finland, Hungary, Iceland, Norway, Poland and Sweden, simultaneous protection by a national patent and a European patent is not excluded (see National law relating to the EPC, 14th ed., table X).

In view of the fact that double patenting involving a national patent and a European patent is not possible in the great majority of the Contracting States (27 out of 35), it has to be concluded that this principle of law is generally recognised in the Contracting States.

However, this exclusion of double patenting concerns a very specific situation in the post-grant procedure, i.e. a situation where, as mentioned above, a granted national patent and a granted European patent claim the same invention. It does not relate to double patenting in the pre-grant stage involving a patent already granted and a patent application going through the grant process.

A European patent application can be refused under A 97(2) or, as in the present case, under A 97(1) EPC 1973 if it or the invention to which it relates does not meet the requirements of the EPC. If therefore the application is refused for double patenting, the absence of subject-matter already claimed in a granted European patent by the same applicant must be a requirement that the European application must meet in order to be granted. The refusal of a European patent application based on A 125 therefore requires the existence of principles of law generally recognised in the Contracting States which refer to the pre-grant procedure and which allow the refusal of a national patent application for double-patenting. 

Such provisions exist in Ireland and in the United Kingdom: 

Section 31(5) of the Irish Patents Act 1992 reads: 

“Where two or more patent applications for the same invention having the sane date of filing or the same date of priority are filed by the same applicant or his successor in title, the Controller may on that ground refuse to grant a patent in respect of more than one of the applications.”

Section 18(5) of the UK Patents Act 1977 reads:

“Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptroller may on that ground refuse to grant a patent in pursuance of more than one of the applications.”

However, no further patent convention in the Contracting States could be found in which the refusal of a patent application for double patenting is provided for. The German patent law does not contain such a provision either. However, case law does exist in Germany for not granting patent applications in case of double patenting on the ground that there is no legitimate interest (see BPatGE 21, 223). Thus, the headnote in case BPatGE 21, 223 reads:

“There is no legitimate interest in granting several patents arising from applications from one and the same applicant with identical contents and priority dates.” [translation by the board]

[2.2.3] To summarise: There is a general principle of law generally recognised in the Contracting States for not allowing double patenting arising from a granted national patent and a granted European patent, but this does not provide a basis for refusing a European application under A 97(2) or Article 97(1) EPC 1973 at the pre-grant stage. In view of the fact that only two national patent conventions of the Contracting States and the case law of a third Contracting State provide a basis for refusing a patent application for double patenting, there is no principle of law generally recognised in the Contracting States for refusing a European patent application on the ground of double patenting.

[2.2.4] In the present case, where double patenting is caused by internal priority, the number of Contracting States providing a basis for refusing an application for double patenting is further reduced to two, as the German case law, which denies a legitimate interest, does not apply for the following reasons:

[2.2.4.1] A 63(1) stipulates that “the term of the European patent shall be 20 years from the date of filing of the application”. The relevant date for calculating the 20-year term is not the priority date but the filing date (see in this context also Article 4bis(5) of the Paris Convention). This means that the refusal of the contested application deprives the appellant of almost one year of protection, since the starting date for calculating the 20-year term is shifted from 21 July 2003 (filing date of the contested application) to 25 July 2002 (priority date of the contested application = filing date of D1). Therefore, the appellant has a legitimate interest in the grant of the contested application. In this context it is noted that the presence of two identical sets of claims in a granted patent and in a patent application of the same applicant is not a sufficient reason for denying a legitimate interest. All the rights arising from these documents, including the period of patent protection, have to be taken into consideration. As a consequence, the German case law is not relevant in the present case.

[2.2.4.2] According to the German patent law, an earlier application from which a subsequent application claims priority is deemed withdrawn with the declaration of priority according to § 40(5) . This means that double patenting arising from an internal priority cannot occur according to German law, as the earlier application cannot proceed to grant. It is important to note that it is the earlier and not the subsequent application claiming priority from the earlier application that cannot proceed to grant. In this way, the legitimate interest of the applicant in terms of the period of protection is guaranteed.

[2.2.5] As a consequence, irrespective of whether or not the EPC lacks procedural provisions in connection with double patenting […], A 125 does not provide a basis for refusing a European application on the ground of double patenting.

A 60

[2.3.1] In decision T 307/03 […], it was decided that A 60 provided a basis for refusing a European application for double patenting. A 60 stated that “The right to a European patent shall belong to the inventor or his successor in title”, from which it could be deduced that under the EPC the principle of double patenting applied, as the inventor or his successor in title had a right to the grant of one and only one patent from the EPO for a particular invention as defined in a particular claim. Once a patent had been granted, this right to a patent had been exhausted and the EPO was entitled to refuse to grant a further patent to the inventor or his successor in title for the subject-matter for which he had already been granted a patent (see [2.1] of the reasons). The fact that the EPC did not contain any specific provisions relating to double patenting was not decisive, as the legislator could not be expected to have made provisions to regulate what would on grounds of economics alone be a very rare occurrence. The board could recognise no legitimate interest in anyone having two or more identical patents with the same claims and the same priority dates (see [2.3] of the reasons). A 60 is integrated into Chapter II of Part II of the EPC, which concerns “Persons entitled to apply for and obtain a European patent - Mention of the inventor”, and it is the purpose of A 60 to define to whom the right to a European patent belongs. This board cannot see how A 60 could serve as a basis for refusing a European application under A 97(2) for double patenting, it cannot agree that A 60 can be interpreted such that the inventor or his successor in title has a right to the grant of one and only one patent from the EPO for a particular invention, with the consequence that claims comprising subject-matter included in the claims of an already granted patent of the same applicant are refused no matter whether or not the applicant has a legitimate interest in the grant of the subsequent application. Contrary to the reasoning applied in decision T 307/03, this board is convinced that the fact that the EPC does not contain any specific provisions relating to double patenting is decisive: in the absence of such provisions, a refusal of a European patent application for double patenting is not possible irrespective of whether or not double patenting is a rare occurrence.

[2.3.3] It could be argued that in such a case the rights to the patent granted on the basis of the earlier application could be given up. However, this argument is futile, as the EPC does not provide a basis therefor: the priority right of the EPC does not include a provision corresponding to § 40(5) of the German law, which would prohibit the grant of the earlier application and thus prevent double patenting in a case of internal priority in the first place (see [2.2.4.2] above). Furthermore, there are no means of forcing an applicant to abandon an already granted patent as a prerequisite for granting the subsequent application either.

[2.3.4] As a consequence, the contested application cannot be refused under A 60 for double patenting.

[2.4] Double patenting as understood in this decision requires that the parties of the conflicting patents or patent applications are identical. In the present case, the patentee of D1 is Boehringer Ingelheim Pharma GmbH (BIP). BIP also filed the contested application as international application WO 2004/011006 on 21 July 2003, which entered the European phase as EP 03 771 064.7 on 12 January 2005. In the Declaration of Assignment dated 27 April 2007, BIP assigned, transferred and set over the entire right, title and interest in and to the above-mentioned protective rights, including priority rights of EP 03 771 064.7 to Boehringer Ingelheim Vetmedica GmbH. The transfer was registered by the EPO on 4 May 2007. No transfer was effected in connection with D1. In view of the above transfer, the patentee of D1 and the applicant of the contested application are no longer identical. As a consequence, the present case resembles the situation described in the last sentence of the paragraph of the Guidelines mentioned above, which explains that where two applications of the same effective date are received from two different applicants, each must be allowed to proceed as though the other did not exist. Formally, therefore, double patenting as defined above no longer exists.

The board is aware that such a unilateral transfer of rights might in certain Contracting States not be allowable under all circumstances. Thus, Article L 614-14 of the French Code de la Propriété intellectuelle reads:

“Where a French patent application or a French patent and a European patent application or a European patent have the same filing or priority date, cover the same invention and belong to the same inventor or to his successor in title, those parts which are common may not be transferred, pledged, mortgaged or their exploitation rights assigned independently of each other on pain of nullity.”

However, this is a question of the subsequent national phases, for which the board is not competent. As a consequence, the application cannot be refused for double patenting, as the parties of the conflicting patent documents are not identical.

Decisions G 1/05 and G 1/06

[3] According to Article 21 RPBA a referral to the Enlarged Board of Appeal (EBA) shall be made if a board considers it necessary to deviate from an interpretation or explanation of the convention contained in an earlier opinion or decision of the Enlarged Board of Appeal. In point [13.4] of decisions G 1/05 and G 1/06, the EBA accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor. However, point [13.4] of said decisions concerns double patenting in connection with divisional applications. With divisional applications the filing date and, as a consequence, the 20-year term according to A 63(1) are the same as with the earlier application(s) on which the divisional application(s) is/are based. Therefore, the present case differs from this situation in that it concerns double patenting arising from internal priority where the conflicting documents have different filing dates. As a consequence, the board concludes that the present decision is not in contradiction with decisions G 1/05 and G 1/06, so that a referral to the EBA according to Article 112(1) (a) is not necessary.

Reimbursement

[4] The ED, being bound by the instructions given by the Guidelines, acted correctly in refusing the present application. Nevertheless, the application was refused under A 97(1) EPC 1973 for non-compliance with a non-existent requirement of the EPC. The refusal therefore infringed the applicant’s fundamental right that there should be a legal basis for any requirement relied on to invoke A 97(1) EPC 1973. Since the appellant was obliged to file the present appeal to overcome this refusal, the board judges it to be equitable that the appeal fee should be reimbursed.

This is a major decision; it would definitely deserve a publication in the OJ. I am particularly happy to see that the A 60 argument is refuted. Basing the prohibition of double patenting on the wording of A 60 is seriously questionable from the exegetical point of view.

To read the whole decision, click here.

T 727/07 – Jurisprudential Potpourri

This decision contains several bits and pieces which as such perhaps would not justify a post but which, nevertheless, are not without interest.

First, there is an interesting statement on procedural economy.

The opponent wished to introduce documents R17 and R18 which it considered very relevant. The opponent also pointed out that they should be admitted for reasons of procedural economy. If the documents were not admitted into the appeal proceedings, it would be necessary to file national invalidation proceedings based on these documents, which would result in long and costly proceedings.

The Board does not agree:

The Board concedes that documents R17 and R18 do not present any particular difficulty and that the question of their admissibility depends essentially on the benefit in terms of procedural economy resulting from their admission. This is an aspect that has to be assessed in view of the relevance of these documents. Considering this, the Board is of the opinion that the notion of procedural economy is to be assessed in relation to the appeal proceedings pending before the Boards of appeal of the EPO. It cannot take into account the possibility of subsequent proceedings which the parties could instigate before other jurisdictions. If it were pushed to its limits, the argument of the [opponent] would have the consequence of depriving article 13(1) RPBA of many of its effects in respect of appellants-opponents. [2.2] 

Secondly, the opponent pointed out that the late filing of the documents was due to a change of the professional representative at a late stage of the appeal proceedings. Again, the Board is not willing to accept the argument:

The Board notes that a change of the professional representative could not possibly justify late filing of documents. It follows from article 12(2) RPBA that the statement of grounds of appeal has to set out all the legal means relied on by the appellant. Therefore, a change of the professional representative could not possibly allow to depart from the requirements that are to be applied at the time of filing the appeal. [2.5] 

Third, the decision has an interesting paragraph on claim interpretation.

Claim 1 of all requests concerned an “Integrated circuit device incorporated into a smart card (carte à puce)”. The opponent pointed out that the concept of a smart card was very general and that it covered the memory cards disclosed in R17 and R18.

Once again, the Board is not persuaded.

Paragraph [0012] as amended during the opposition phase explains that “Smart cards are standard portable memory objects operating by contact and which are defined in particular by standards ISO 78-10 and 78-16 the content of which is incorporated by reference into the present disclosure of the invention.” Even if the reference to the standards in paragraph [0012] is not recalled in the independent claim, the Board finds that: (i) the paragraph contains a definition of the concept of ‘smart card’, and (ii) this definition is intended to apply to the document as a whole. Therefore, the Board considers that the skilled person reading the application would have understood the term ‘smart card’ according to this meaning. As the present Board has already pointed out (T 1281/06 [2]; T 1271/05 [4.3]) the claim should be interpreted in the light of this definition. [2.3]

[…] As the memory cards disclosed in R17 and R18 do not comply with the standards mentioned above, they cannot be considered as smart cards within the meaning of the contested patent. Also, the circuits disclosed in these documents cannot be considered as integrated circuit devices in the sense of a structural unit integrated into a smart card.

As a consequence, neither R17 nor R18 are sufficiently relevant to be admitted into the proceedings. [2.4] 

To read the whole decision (in French), click here.