G 0002/90 (Responsibility of the Legal Board of Appeal) of 4.8.1991

Summary of Proceedings

I. Board of Appeal 3.2.1 referred to the Enlarged Board of Appeal a point of law regarding the competence of the Legal Board of Appeal in certain cases. This decision (T 272/90, OJ EPO 1991, 205) was concerned with the following issue.

II. After a European patent had been finally maintained in amended form, the patent proprietors were requested in accordance with Rule 58(5) EPC to pay the printing fee and file a translation of the amended claims in the other two official languages. As the patent proprietors omitted to file the translations of the claims they were sent a communication under Rule 58(6) EPC to the effect that they could still validly do so within two months of notification of the communication provided a surcharge was paid. They filed the translations, but failed to pay the surcharge.

III. The European patent was then revoked under Article 102(5) EPC by a decision of the formalities officer. The patent proprietors contested this decision in their appeal, maintaining essentially that it had no legal basis. A European patent could be revoked under Article 102(5) EPC if the translations had not been filed in due time, but not if the period of grace under Rule 58(6) EPC had not been observed.

IV. Board of Appeal 3.2.1 took this specific case as an opportunity of referring to the Enlarged Board of Appeal the general question of whether the Legal Board of Appeal is competent to hear appeals against decisions entrusted to formalities officers under Rule 9(3) EPC.

V. In its decision of 6 August 1990, Board of Appeal 3.2.1 found that the appeal under consideration fulfilled the "usual requirements" for admissibility. However, in view of other Boards' decisions (T 26/88, OJ EPO 1991, 30; T 522/88, EPOR 1990, 237; T 114/89 of 9 April 1990, unpublished) the question arose as to whether an appealable decision had in fact been taken or whether the patent's revocation had already occurred automatically by operation of law, so that an appeal was possible only after a decision in accordance with Rule 69(2) EPC.

VI. The decision under consideration addresses itself to certain other issues in connection with the legal point referred to the Enlarged Board. For example, there was the question of whether the President of the European Patent Office could delegate his powers of entrustment under Rule 9(3) EPC. The delegation of law-making powers to one of the Vice-Presidents without making the others co-responsible seemed questionable, especially bearing in mind that entrustment under Rule 9(3) EPC presupposes that the duties involve "no technical or legal difficulties". It was particularly questionable when it took the form of a further delegation of the President's powers under Rule 9(3) EPC to re-allocate competence by derogation from Articles 18(1) and 19(1) EPC.

The President of the European Patent Office asked to be given an opportunity of commenting under Article 11(a) of the Rules of Procedure of the Enlarged Board of Appeal if the Board were to raise the question of whether the President of the European Patent Office was empowered to delegate the assignment of duties under Rule 9(3) EPC to the Vice-President Directorate-General 2. The Board decided not to hear the President.

VII. The parties stated unanimously that they did not wish to make any comments or submit any requests in proceedings before the Enlarged Board.

Reasons for the Decision

1. Admissibility of the referral

In its decision the Board of Appeal referring the point of law found that the appeal under consideration fulfilled the usual requirements for admissibility, but did not rule on the further question of whether the contested decision under Article 102(5) EPC was open to appeal in the first place. Unless the point of law actually concerns some aspect of the appeal's admissibility, however, it can only be referred if the Board regards the appeal as admissible. The Enlarged Board ruled on the undecided point of law in its opinion G 1/90 of 5 March 1991 (OJ EPO 1991, 275), which lays down that the revocation of a patent under Article 102(4) and (5) EPC requires a decision. That will doubtless have made it clear, in accordance with the rationale of the referring Board's decision, that the admissibility requirement not ruled on by the referring Board is also met. The point of law in question therefore concerns an admissible appeal.

2. The point of law

The point of law under consideration is worded as follows in the Order which concludes the decision of Board 3.2.1:

"Is the Legal Board of Appeal competent for appeals against decisions entrusted to formalities officers under Rule 9(3) EPC?" To clarify the situation the referring Board stated under point 3.5 of the Reasons for the Decision that the point of law was so worded that should the Enlarged Board decide in the affirmative, the Legal Board would be competent to hear an appeal arising from a decision which although taken by the Examining or Opposition Division itself falls within the ambit of an entrusted duty. Otherwise the department of first instance would be in a position to choose the type of decision and thus to determine which Board of Appeal was to review it.

3. Competence of the Legal and Technical Boards of Appeal

3.1 The competence of the Legal and Technical Boards of Appeal to hear appeals against decisions of the Examining and Opposition Divisions is laid down as follows in Article 21, paragraph (3) and (4) EPC:

"(3) For appeals from a decision of an Examining Division, a Board of Appeal shall consist of:

(a) two technically qualified members and one legally qualified member, when the decision concerns the refusal of a European patent application of the grant of a European patent and was taken by an Examining Division consisting of less than four members;

(b) three technically qualified members and two legally qualified members, when the decision was taken by an Examining Division consisting of four members or when the Board of Appeal considers that the nature of the appeal so requires;

(c) three legally qualified members in all other cases.

(4) For appeals from a decision of an Opposition Division, a Board of Appeal shall consist of:

(a) two technically qualified members and one legally qualified member, when the decision was taken by an Opposition Division consisting of three members;

(b) three technically qualified members and two legally qualified members, when the decision was taken by an Opposition Division consisting of four members or when the Board of Appeal considers that the nature of the appeal so requires."

3.2 The Legal Board of Appeal is competent under Article 21(3)(c) EPC to hear appeals against certain decisions of an Examining Division, but not appeals against similar decisions of an Opposition Division. Under Article 21(3)(c) EPC the Legal Board is competent in "all other cases", i.e. those not covered by Article 21(3)(a) and (b) EPC. In other words, it is never competent when the contested decision was taken by an Examining Division consisting of four members (Article 21(3)(b) EPC). Article 21(3)(c), on the other hand, allows for the possibility of "other cases" - in which the Legal Board may be competent - arising under Article 21(3)(a) EPC: here, in contrast to Article 21(3)(b) and (4) EPC, there is a substantive requirement in that the Technical Board is competent only "when the decision concerns the refusal of a European patent application or the grant of a European patent". But if a decision of an Examining Division consisting of fewer than four members relates to some other matter (e.g. re-establishment), then Article 21(3)(a) EPC lays down that the Technical Board is not competent and Article 21(3)(c) EPC stipulates that the Legal Board is.

3.3 Article 21(4) EPC, on the other hand, contains no catch-all provision for the competence of the Legal Board similar to Article 21(3)(c) EPC. This is not an oversight on the part of the legislator but a provision in line with the logic of the rules governing the allocation of competences. It would make no sense to include in Article 21(4) EPC a provision corresponding to Article 21(3)(c) EPC, since decisions of an Opposition Division involve no "other cases" than those referred to in Article 21(4)(a) and (b). This is because the rules applying to the Technical Board in opposition cases simply follow on from the composition of the department of first instance - as in the case of Article 21(3)(b) EPC - and do not, in contrast to Article 21(3)(a) EPC, lay down a further material requirement for the Technical Board's competence such as the revocation or maintenance of the patent or the rejection of the opposition. The legislator thus made it quite clear that the Technical Board was to be competent to hear all appeals against decisions of an Opposition Division or Examining Division consisting of four members.

3.4 The Enlarged Board of Appeal takes the view, moreover, that it would be quite inadmissible to interpret an unambiguous legal provision concerning the exclusive competence of the Technical Board as being invested with some other meaning merely because other conceivable arrangements might offer certain advantages.

3.5 No adequate reason exists for investing Article 21(3)(b) or (4) EPC with a different interpretation from that indicated by its unequivocal wording. The decision referred to the Enlarged Board cites cases which, according to the decision itself, ought to have been handled by the Legal instead of the Technical Board. That may well be so in specific cases, but it is no reason to correct a clear-cut legislative decision. Any general rule may in certain circumstances turn out not to be the best solution. However, this shortcoming is inherent in any general rule and is no reason for not applying it. On the contrary, the legislator's general decision to reserve competence for the opposition appeal procedure to the Technical Boards has to be accepted.

3.6 Nor does the Enlarged Board see any reason why the Technical Boards should not be competent to hear precisely those appeal proceedings which the referring Board suggests should be handled by the Legal Board. After all, appeals against decisions entrusted to formalities officers under Rule 9(3) EPC may only concern matters involving no technical or legal difficulties (Rule 9(3) EPC). If they involve no legal difficulties, there is no reason why the three-member Legal Board should be competent to hear the proceedings.

3.7 In the reasons for its decision the referring Board discussed certain other points of law (cf. point VI above) which it saw as associated with the one referred. The Enlarged Board has not considered these since the one referred to it can be answered without doing so (cf. points 3.2 to 3.6 above).

ORDER

For these reasons it is decided that:

The point of law referred to the Enlarged Board of Appeal is to be answered as follows:

1. Under Article 21(3)(c) EPC, the Legal Board of Appeal is competent only to hear appeals against decisions taken by an Examining Division consisting of fewer than four members when the decision does not concern the refusal of a European patent application or the grant of a European patent. In all other cases, i.e. those covered by Article 21(3)(a), (3)(b) and (4) EPC, the Technical Board of Appeal is competent.

2. The provisions relating to competence in Article 21(3) and (4) EPC are not affected by Rule 9(3) EPC.