J 0014/87 (Mention of grant of patent) of 20.5.1987

Summary of Facts and Submissions

I. On 20 February 1986 the EPO, in accordance with Article 97(2) EPC, issued a decision to grant a European patent on the basis of European patent application No. 83 105 017.4 for six designated States including Sweden. Mention of the grant pursuant to Article 97(4) EPC was scheduled for publication on 2 April 1986 in European Patent Bulletin No. 86/14.

II. Whilst Section II.2 to II.4 of that issue duly gave particulars of the patent granted, all the details that should have appeared under Section II.1 were missing, apparently because of an oversight during printing.

III. By letter of 21 November 1986 the patentees informed the EPO that the Swedish Patent Office maintained that no European patent had been granted. They therefore at the same time took the precaution of paying the fourth-year renewal fee plus additional fee which under Article 86 and Rule 37 EPC would have fallen due on 31 May and 30 November 1986 respectively.

IV. In a communication dated 9 December 1986 the Head of Formalities for the EPO Examining Division replied that the mention of grant of 2 April 1986 should be regarded as null and void and that a new mention would be published in European Patent Bulletin No. 87/04 of 21 January 1987. He confirmed that the fourth-year renewal fee had been paid in due time.

V. On 11 December 1986 the EPO issued a second decision under Article 97(2) EPC granting a European patent on the basis of the above-mentioned application.

VI. By letter of 12 December 1986 the patentees requested:

- a refund of the fourth-year renewal fee

- that the new mention of grant should not be published in the European Patent Bulletin

- an appealable decision

VII. On 2 January 1987 the Head of Formalities issued a decision refusing the request for a refund and pointing out inter alia that: Since it was the Office's practice to publish all particulars of a granted patent in Section II.1 of the European Patent Bulletin the public assumed that applications which did not appear there had not yet been granted. It was possible therefore that persons interested in the patent in question had not looked at the particulars given in the other sections. Consequently, publication of the mention of grant did not meet the requirements of Article 97(4) EPC. A decision to grant a European patent did not take effect until the European Patent Bulletin properly mentioned the grant (Articles 64(1) and 97(4) EPC). This meant that the application in question was still pending before the EPO, which under Article 86(1) in conjunction with Rule 37(1) EPC was therefore entitled to the fourth-year renewal fee that had fallen due before effective publication of the mention of grant on 21 January 1987. Mention of grant was published solely on the basis of a previous decision to grant. There was no provision for an independent decision regarding the date of publication. Furthermore, the designated States had already been informed of the new publication date (21 January 1987). For reasons of legal certainty the interests of those States took precedence over that of the applicants in having the legal position clarified first. Their request for an appealable decision was not therefore ground for the Office's refraining from or postponing publication. This did not in any case adversely affect the patentees, who were at liberty any time to invoke the earlier mention of 2 April 1986 where specific legal consequences, such as in this case the need to pay the fourth-year renewal fee, derived from the validity or non-validity of that mention.

VIII. Particulars of the patent granted were duly published on page 205 (Section II.1) and pages 268, 272, 277, 288, 290, 292, 293, 296 and 298 (Sections II.2 to II.4) of European Patent Bulletin No. 87/04 of 21 January 1987.

IX. On 25 February 1987 the patentees appealed against this decision, paying the fee for appeal and requesting that:

1. The decision of 2 January 1987 be set aside in its entirety.

2. The fourth-year renewal fee plus additional fee be refunded.

3. The fee for appeal be refunded.

4. The costs resulting from the second mention of grant be reimbursed. Failing that, they requested that (a) The additional fee in respect of the fourth-year renewal fee be refunded. (b) The costs resulting from the first mention of grant be reimbursed.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC, and is therefore admissible.

2. Article 129(a) EPC requires the EPO periodically to publish a European Patent Bulletin containing entries made in the Register of European Patents, "as well as other particulars the publication of which is prescribed by this Convention". One such is the mention of grant - cf. Article 97(4) EPC, which also stipulates that the mention must be published at least three months after the start of the time limit for paying the fees for grant and printing.

3. Under Article 97(4) EPC the decision to grant does not take effect until the date on which the European Patent Bulletin mentions the grant, so clearly this mention is of fundamental importance. Furthermore, Article 64(1) EPC stipulates that only after that date does the European patent confer on its proprietor, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State (subject however in certain cases to compliance with the provisions of Article 65 EPC regarding translation of the specification). Lastly, publication of the mention of grant also triggers the nine-month opposition period under Article 99 EPC.

4. The appellants rightly state that the EPC nowhere specifies the requirements as to form and content of the mention of grant published in the European Patent Bulletin. This is thus a matter of EPO administrative practice.

5. Established practice is that the European Patent Bulletin comprises two main parts, Part I giving details of published applications and Part II of granted patents. Both have a number of sections and sub-sections giving various particulars in a set order. Sections I.1 and II.1 list applications and patents respectively in terms of their International Patent Classification and - unlike subsequent sections, which list under various headings only a few details such as publication No., date of filing, name of applicant or patentee - give all the particulars of the applications and patents listed in that particular issue of the Bulletin.

6. In the case under consideration the application was published in European Patent Bulletin No. 83/49 of 7 December 1983, in full accord with the practice described in point 5 above. Section I.1 contains all the usual particulars, including the filing and priority dates and the title of the invention. However, as mentioned in point II above the mention of grant published in Bulletin No. 86/14 of 2 April 1986 is incomplete in that it lacks the particulars that should be given under Section II.1, obviously due to an oversight during printing.

7. This is without doubt a serious omission, and raises the question of whether the mention of grant of the European patent concerned as it appeared in the European Patent Bulletin in fact meets the requirements for it to take effect under Article 97(4) EPC and under Article 64(1) EPC confer on its proprietor the same rights as would a national patent. It is therefore understandable that the Formalities Section sought to put matters right when the error was made known.

8. The first question arising in considering what the appropriate procedure would have been in this situation is what purpose the mention of grant published in the Bulletin actually fulfils. Apart from fixing the date on which the patent begins to have legal force in the designated Contracting States, and thus ending the provisional protection under Article 67, its chief purpose is to provide the public - especially a patentee's competitors with the information enabling them to decide within the nine- month period allowed by Article 99 EPC whether to oppose the European patent that has been granted. The appellants rightly argue in this connection that no sensible opponent would base this decision solely on the particulars published in the European Patent Bulletin but instead would normally first examine carefully the scope of protection conferred. This however can only be done satisfactorily on the basis of the patent specification, which Article 98 EPC requires the EPO to publish at the same time as the mention of grant. The latter's main purpose therefore is to make known the fact that a patent has been granted. This may, depending on the circumstances, prompt interested parties to study the specification carefully in order to find specific grounds on which to oppose it.

9. In the present case failure to print any particulars in Section II.1 of the Bulletin undoubtedly impeded a clear ascertaining of facts to a more than normal degree and it is not impossible that the omission may have caused certain interested parties to pay the grant of this patent less than their usual attention. Since, however, those concerned normally keep a fairly close check on European applications and patents published, the Board feels it safe to assume that the great majority would have seen the further particulars given in the other sections and that the information given in Sections II.2 to II.4 of European Patent Bulletin No. 86/14, namely the listing by International Patent Classification with correct application and publication Nos. and the patentee's name, are sufficient for the main purpose of the mention of grant defined above. If moreover one of them failed to oppose the patent within the period allowed by Article 99 EPC because of a failure to notice the mention of its grant he would still be left with the possibility of revocation proceedings under the laws of the designated Contracting States (cf. Article 138 EPC).

10. In these circumstances, and because the patentees have a legitimate interest in not foregoing rights on which they should be able to rely, the Board rules that the mention of the grant of the European patent in suit in European Patent Bulletin No. 86/14 of 2 April 1986 fulfils the requirements of Article 97(4) EPC, and that the decision to grant the European patent of 20 February 1986 therefore took effect on that date. The Head of Formalities' action in declaring that mention null and void thus clearly went too far and cannot be upheld. The same goes for the subsequent new decision to grant and publication of a new mention of the grant. In the Board's view all that was necessary was to publish a correction in Section II.12 of a later issue of the Bulletin giving the particulars originally omitted from Section II.1.

11. To prevent any misunderstanding the Board would emphasise that its conclusion in this case in no way implies that the EPO should change its existing practice in the matter of publication, whose purpose of providing the public with clear and comprehensive information it fully endorses. The practice, moreover, would seem excellently designed to fulfil that objective. There is thus no cause for the EPO to change its tried and tested practice. However it is quite possible to conceive of circumstances - were the EPO for example to publish obviously misleading information on salient points - in which publication of the mention of grant might be so flawed as to be invalid, in which case it would have to be repeated. Each case must therefore be judged on its substantive merits.

12. Given the Board's ruling in point 10 above that 2 April 1986 is to be regarded as the correct date of publication of the mention of grant, the obligation to pay renewal fees to the EPO ended before the fourth-year fee fell due on 31 May 1986 (Article 86 and Rule 37 EPC). The fee plus additional fee paid for that year must therefore be refunded, as the appellants have requested.

13. Neither the EPC nor any other legal text empowers the Board of Appeal to consider claims against the EPO for compensation in respect of loss or damage allegedly sustained in the course of European patent grant proceedings (cf. Article 9 EPC). The Board therefore dismisses the appellants' request for reimbursement of additional costs resulting from the two mentions of grant without being in any way able to pronounce on its legal merits.

ORDER

For these reasons, it is decided that:

1. The contested decision is set aside.

2. A notice is to be published in the European Patent Bulletin stating that the decision to grant the European patent in question took effect on 2 April 1986, and that the second decision of 11 December 1986 granting the same patent remained without effect. ...

5. The claim for damages is dismissed.