J 0014/91 (Inspection of files) of 6.11.1991

Summary of Facts and Submissions

I. European patent application No. 90 124 892.2 entitled "Process and apparatus for coating pistons" was filed on 20 December 1990 claiming the priority of German patent application P 4 023 135.6 of 20 July 1990.

II. In a letter dated 25 April 1991, the appellants informed the EPO that they wished to inspect the files of the European patent application. The reason they put forward was that, in a letter dated 22 April 1991, the applicant had given them a warning based on the German priority application and drawn attention to a parallel European application.

A copy of the letter in question was enclosed with the request. The letter begins with the following sentence:

"As you know, ... have filed a patent application with the German Patent Office (and in the meantime also with the European Patent Office) relating to a process and an apparatus for coating engine pistons using a silk screen process."

The letter goes on to give the wording of the claim on the basis of which the examiner had indicated that a patent might be granted. It concludes as follows:

"We have been instructed by our clients to enquire on their behalf why you consider yourself entitled to begin manufacturing a coated engine piston,.... If you cannot furnish evidence of any dominant rights you must expect that once the decision to grant has been given and notice of grant has been published in the Patent Bulletin, our clients will wish to invoke their rights."

III. The respondent (applicant) withheld his consent to inspection of the files on the grounds that the letter in question clearly related only to the German patent application and that the passage referring to the European application had been included purely by way of information. Nor was the letter as a whole to be considered as a warning; all it did was to advise of the situation and, out of a desire to be helpful, informed the recipient in good time that rights would be invoked after the grant of the patent.

IV. In a decision dated 20 August 1991, the Receiving Section refused the request for inspection of the files on the grounds that the respondent's letter merely contained a reference to the European patent application but did not "invoke the rights" under it within the meaning of Article 128(2) EPC. The rights could be said to have been invoked only if the applicant drew the third party's attention to the consequences that would arise for him in the event of the patent's being granted. While it was clear from the letter that the applicant was resolved to take action under the German application, this could not be regarded as a threat to invoke rights under the European application.

V. The appellants appealed against this decision on 16 September 1991, paid the appeal fee at the same time and gave the following as their grounds of appeal:

What was said in the letter of 22 April 1991 applied equally to the corresponding European application - especially as under German law, in the event of a European patent being granted with effect for Germany, the respondent could only invoke rights under the European patent in so far as it was identical in substance with the German priority patent. If the respondent was resolved to invoke his German patent, this automatically applied likewise to the corresponding European patent effective in Germany.

Furthermore, the European patent application extended beyond the subject-matter of the patent which the German Patent Office had signified its intention to grant, as could be seen from the copy supplied of the respondent's letter of 26 April 1991. This included the sentence: "We should also like to point out that further particulars of a specific improved silk screen process have been included in the European patent application claiming the German priority."

The appellants pointed out that on account of the respondent's warning they were prevented from continuing work on their silk screen coating process lest they be found to be infringing a patent. They accordingly requested an early decision as they might otherwise find themselves at a serious competitive disadvantage.

VI. In a written submission dated 11 October 1991 the respondent took issue with all the arguments put forward by the appellants. Referring to the decision of the Receiving Section he said that the letter of 22 April 1991 at most contained a warning based on the German patent application, which at the time was coming up for grant. A warning could not have been issued on the basis of the subsequent European application; not only had the request for examination not yet been filed but the search report had not even been issued. Nor did the letter of 26 April 1991 concerning the European patent application, submitted together with the appeal, say anything about a warning or a request to cease and desist.

In particular the suggestion that the appellants might find themselves at a serious competitive disadvantage was absurd. In fact the advance information they had received concerning the substance of the German priority application gave them a decisive lead over other competitors. As no warning had been issued on the basis of the European patent application, however, access to the files relating to that application would give the appellants an unacceptable competitive advantage.

VII. The Legal Board of Appeal thought it appropriate to hold oral proceedings, and summoned the parties to appear on 6 November 1991. On 16 October 1991 the Chairman of the Board gave them advance notice of the date over the telephone. The summons reached them on 22 October 1991. In a communication pursuant to Article 11(2) of the Rules of Procedure of the Boards of Appeal, which accompanied the summons, the parties were informed that the points which the Board intended to discuss at the oral proceedings included the nature of an inspection of files under Article 128(2) EPC, the legality of the abridged period of notice of the summons and the question whether inspection of files under Article 128(2) EPC could be obtained in a case where only the rights under the priority application had been invoked.

VIII. The Board also decided, in accordance with Article 12a of the Rules of Procedure, to hear the President of the European Patent Office concerning questions of general interest arising in the course of these proceedings and in particular to give him an opportunity to take part in the oral proceedings.

IX. In his reply to the relevant invitation, the President stated that the question which seemed to him of particular general interest was that of how far it was permissible to deviate from the period of notice stipulated for summonses in Rule 71(1) EPC in proceedings relating to inspection of the files before publication of the application. He told the Board he would be represented at the oral proceedings by a member of the Patent Law Directorate who would give his comments verbally.

X. The parties and a representative of the President of the European Patent Office appeared at the oral proceedings. The hearing began with a discussion concerning the abridgement of the period of notice for summonses laid down in Rule 71(1) EPC.

XI. The respondent's representative objected to 6 November 1991 as the date for oral proceedings. His objection was based essentially on the following grounds:

- Rule 71(1) stipulated at least two months' notice without qualification. The notice given in the present case had been much shorter. There was no legal basis for shortening the period;

- Similarly the time limit under Article 11(2) of the Rules of Procedure of the Boards of Appeal, which provided for the Board to send with the summons a communication drawing attention to matters which seemed to be of special significance in preparation for the oral proceedings, had not been observed;

- This flagrant disregard for time limits laid down in the legislation and implementing provisions was a breach of the principle audi alteram partem;

- The applicant should not suffer merely because granting an opportunity to present comments in accordance with the principle audi alteram partem in the written procedure and exhausting the various legal remedies would leave little or no time to inspect the files ahead of time;

- Provisions regarded as unsatisfactory should not be corrected by judicial pronouncement; this was a matter for legislation;

- Nor did the use of the full period of notice constitute a denial of rights. If a Japanese national had been party to the proceedings, a longer period would have had to be allowed. It therefore looked as though a German national might be put at a disadvantage merely because he could respond sooner. This militated against balance and consistency in the case law;

- Nor again was there any question of abuse or of the applicant's vital interests being at stake.

XII. The appellants made the following points:

- The procedure for inspecting files would be rendered inoperable if the normal periods of notice were to apply. To carry on with the procedure on this basis would be tantamount to a denial of rights. The two-month period under Rule 71(1) EPC was based on practical considerations and was designed with the logistics of organising the oral proceedings in mind. There was no technically complex subject-matter involved that would require any considerable time to sort out. Nor were any complex points of law at issue. The parties, moreover, spoke the same language and could be easily reached.

- Oral proceedings would simplify matters for both parties by enabling a comprehensive and direct exchange of arguments to take place in a way which was not possible in the written procedure. Oral proceedings were the appropriate means for ensuring that the parties were given the full benefit of the principle audi alteram partem without delay.

- The right to inspect the files in accordance with Article 128(2) EPC had to be enforceable. If two incompatible legal provisions stood in opposition, substantive law had to take precedence over procedural law. This was a prerequisite in any consideration of the relative weight to be attached to the parties' interests.

XIII. The main points made by the representative of the President of the European Patent Office were as follows:

- The period of notice required for a summons was designed to facilitate the preparation of oral proceedings, for which purpose the parties had to be allowed sufficient time. It had to be borne in mind that this also applied to non-residents, who could not discuss the case with their representatives at such short notice as had been given in the present case. The period thus had to be the same for everyone.

- Case law should not depart unnecessarily from existing provisions; any changes should be a matter for legislation. Whilst it was not denied that this provision could be unfair in some cases and could lead to abuse, a shorter period of notice should be considered on these grounds, if at all, only in cases of obvious abuse or where the interests of the requester were pre-eminent. Neither situation arose in the present case.

XIV. The Board then retired to consider the matter of the abridged period of notice of the summons granted in the present case, after which it announced the outcome of its deliberations: the procedural circumstances were such that it would be able to give a decision at the end of the oral proceedings.

XV. With regard to the substantive issues, the appellants first of all submitted a copy of a letter from the respondents dated 27 December 1990 informing them of the filing of the German patent application and drawing their attention in that connection to the amended penalty clause in section 142 of the German Patent Law. The letter concluded: "Since our client has in the meantime already filed a European patent application claiming the German priority ..., he is not necessarily bound to collaborate with a German manufacturer."

The appellants still maintained that the respondent had "invoked the rights under" the European patent application against them in the letter of 22 April 1991. The expression "invoke the rights under" in this context meant drawing attention to rights which one was prepared to exercise. The letter was addressed to a recipient familiar with patent law who knew that simultaneous protection was not allowed in Germany (cf. Article II, section 8, of the Law on International Patent Treaties). This meant that the German patent could only be validly invoked as long as there was no European patent. It was thus purely a matter of chronological sequence. The European patent would automatically supersede the German patent at a certain point in time. The respondent had mentioned the European application systematically in connection with the German application in three letters written in quick succession. The warning based on the German application thus also constituted an invocation of the rights under the European application, even if the latter application was simply mentioned and no rights deriving from it were expressly invoked.

XVI. The respondent took issue with the foregoing remarks. In his view, the "rights" under the European patent application had not been "invoked" within the meaning of Article 128(2) EPC. The appellants knew, moreover, that the European patent application was still at an early stage of the procedure. It had been mentioned merely in passing and the recipient's interpretation of it differed from the meaning intended by the applicant. All three letters had alluded clearly to the German case and none mentioned a designation of Germany; that was being read into them. Nor was the provision prohibiting simultaneous protection - Article II, section 8, of the Law on International Patent Treaties - material to the present case. XVII.The President's representative said that the interests of both parties had to be considered when the provision on inspection of files was interpreted. Prior to publication, the European patent application normally had to be treated confidentially. A departure from this principle could be contemplated only if the applicant himself broke his secrecy. Confidentiality was not breached by a mere point of information; there also had to be some sort of threat such as did not occur in the present case. Rights were indeed invoked in the letter of 22 April 1991, albeit under the German application. The letter of 26 April 1991, on the other hand, contained no invocation of rights but merely a point of information. Before the prohibition on simultaneous protection came into operation there were two independent applications and the applicant could choose which of them he wished to invoke. It should also be remembered that the application could always be withdrawn to preserve its secrecy.

XVIII. The appellants replied to the statements of the respondent and the President's representative by saying that an interpretation of the letters should be based not on the subjective intention of the writer but on how a recipient could reasonably be expected to construe them in the light of a proper understanding. The appellants had assumed that Germany was designated in the European patent application, that being the usual practice.

The appellants did not think the relative weight to be attached to the parties' interests should play a role in interpreting the provision on file inspection. Its wording should first of all be scrutinised and the provision's object and purpose then established. The appellants also thought it incorrect to equate "invoking the rights under" with "threatening". XIX.The appellants requested that the contested decision be set aside and that they be granted inspection of the files of the European patent application.

The respondent requested that the appeal be dismissed and, in the alternative, that the following point of law be referred to the Enlarged Board of Appeal pursuant to Article 112(1) EPC:

"1. Examination as to whether, in the event of a summons, a shorter period of notice than that stipulated in Rule 71 (2 months) may be given in proceedings under Article 128(2) EPC; in this case less than one week bearing in mind the '10-day rule'.

2. May inspection of the files be obtained under Article 128(2) EPC even if rights have only been invoked under the priority application?

3. Does invocation of the rights under a priority application together with a mere reference to a European patent application also constitute invocation of the rights under the European patent application?"

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC, and is also admissible in all other respects.

2. Under Rule 71(1), second sentence, EPC, at least two months' notice must be given in the event of a summons to oral proceedings unless the parties agree to a shorter period. In the present case the respondent did not agree to a shorter period.

Nowhere in the Implementing Regulations is there provision for the periods to be abridged other than by agreement. In fact Rule 84, first sentence, EPC stipulates as a general rule that a period to be determined by the European Patent Office must not be less than two months or more than four months, but that in certain special circumstances it may be up to six months. In certain special cases, the period may be extended upon request, presented before the expiry of the period (Rule 84, second sentence, EPC). There is no mention, on the other hand, of special cases requiring a period shorter than two months.

It therefore needs to be established whether a basis can be found in the Convention for summoning at shorter notice in the event of a dispute concerning the application of Article 128(2) EPC. Three provisions offer possibilities in this respect.

2.1 In the substantive provision applicable to the present case, Article 128 EPC (Inspection of files), paragraph 1 stipulates that the files relating to European patent applications which have not yet been published must not be made available for inspection without the consent of the applicant. Under paragraph 2, any person who can prove that the applicant for a European patent has invoked the rights under the application against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. Obviously this provision can only fulfil its object and purpose if no procedural provisions stand in the way. Were it necessary to regard the two-month period as an inviolable, rigid and universally applicable arrangement and if applicants were to exploit it to the full, it would rarely be possible to complete appeal proceedings in relation to requests for inspection of the files before disclosure of the application. The provision could thus be circumvented and taken to absurd lengths. That cannot have been the legislator's intention.

2.2 The second provision presenting itself for consideration offers some prospect of resolving this conflict.

Article 164(2) EPC stipulates that, in the case of conflict (French: "divergence"; German: "mangelnde Übereinstimmung" - lack of agreement) between the provisions of the Convention and those of the Implementing Regulations, the provisions of the Convention prevail. The situation arising in the present case would seem to be best reflected by the English version; there is a conflict between a provision of the Convention - Article 128(2) - and provisions of the Implementing Regulations - Rules 71(1), second sentence, and 84.

In the present case, Article 164(2) EPC allows the period of notice stipulated in Rules 71 and 84 to be abridged so that the rights under Article 128(2) EPC can be enforced.

2.3 Finally, recourse may also be had to a third provision of the Convention.

Article 125 EPC states that the European Patent Office must take into account the principles of procedural law generally recognised in the Contracting States in the absence of procedural provisions in the Convention, as is the case here. Suitable provisions for urgent cases are contained in neither the Implementing Regulations nor the Convention itself. It is however a generally recognised principle of procedural law in the Contracting States to the Convention that periods may be abridged in urgent cases.

2.3.1 For example, section 226(1) of the German Code of Civil Procedure contains a general provision to the effect that periods, including the period of notice for a summons, may be abridged on application. Similarly, under section 89(1) of the German Patent Law, the Chairman may abridge the period of notice - of at least two weeks - in urgent cases.

2.3.2 Under English law, according to Halsbury's Laws of England, p.Vol. 37, para. 30, the court has power, on such terms as it thinks just, by order to extend or abridge the period within which a person is required or authorised to do any act in any proceedings. The wide powers of discretion thus conferred upon the court are designed to prevent injustices.

2.3.3 French law likewise provides for periods to be abridged in urgent cases. Article 484 of the Code de procédure civile, for example, makes provision for the necessary measures to be ordered immediately under the référé - interlocutory injunction - procedure.

Further instances of national provisions enabling periods to be abridged could be cited at will. However, the Board considers that the three examples above provide a sufficient basis for having recourse to Article 125 EPC.

2.4 The Board was thus entitled, under the Convention, to give less than two months' notice of oral proceedings in the present case; that period was quite clearly designed primarily with a view to clarifying technical issues in grant and opposition proceedings.

2.5 The amount by which the period may be reduced will depend on each individual case, taking due account of the circumstances.

In the present case the facts were straightforward. Only their evaluation was in dispute. Moreover, the parties did not have far to travel and spoke the same language. In these circumstances the Board considered it sufficient to give them 20 days' advance notice of the oral proceedings.

In general a period may be said to be sufficient if, considering the circumstances of the case, it allows the parties to prepare themselves properly. These circumstances include, in particular, the history of the case, where the parties have their residence or principal place of business and whether they have been given advance notice by telephone, telex or fax.

3. Although the facts were clear and straightforward the Board felt that oral proceedings would be useful, as they not only provide the best way of ensuring that the parties are given ample opportunity to present their comments (audi alteram partem), but at the same time expedite the procedure. In particular, where the issue is whether a statement made by the applicant to the requester is to be regarded as "invoking the rights under", further amplification may be required from both sides and oral proceedings offer the quickest way of getting to the root of the matter. In any case, a party given the opportunity to present comments in the written procedure might well conclude by requesting oral proceedings after all, thus prolonging the procedure as a whole.

4. A further question to be considered is whether the respondent invoked the rights under his European patent application vis-à- vis the appellants within the meaning of Article 128(2) EPC.

4.1 Whilst the texts in German ("sich ... auf seine europäische Patentanmeldung berufen hat") and French ("s'est prévalu de sa demande") are somewhat vague and equivocal, and therefore require interpretation in order to establish their meaning, the English text, with its reference to the rights under the application, is a great deal clearer and more precise. It thus limits the more general formulation adopted in the other two versions whilst at the same time providing guidance as to where the line should be drawn in interpretation. According to the German and French wording, a party could be entitled to inspect the files on the basis of a mere reference to the application or a notice relating to it. The English version clarifies the position by limiting inspection to cases in which the applicant has drawn the attention of a third party to his rights under the application, i.e. to the consequences which may result for the third party once the patent has been granted and publicised in the Patent Bulletin if he does not desist from use of the invention (cf. also Singer, Note 2 to Article 128 EPC).

4.2 The correctness of this interpretation is also confirmed by the preparatory documents relating to the Convention, where it is stated that : "It seemed important that a competitor who had begun manufacturing operations should be able to acquaint himself with the files even without the applicant's consent where this applicant had availed himself of his application to the disadvantage of the competitor. Under these circumstances, the competitor should be able to decide, in full knowledge of the facts, whether or not to continue to exploit or invest in the invention" (cf. minutes of the 4th meeting of Working Party I Sub-Committee on "Implementing Regulations" in Luxembourg from 23 to 27 November 1970 - BR/68/70).

4.3 It now has to be established whether the correspondence submitted by the appellants invokes the rights under the European patent application in the sense explained above.

4.3.1 In the letter of earliest date - 27 December 1990 - but only submitted at the oral proceedings, the respondent accuses the appellants of intending to commit an indirect patent infringement and cautions them as to the relevant penalty provisions for patent infringements in the German Patent Law. The relevant remarks - accusation and warning - are clearly confined to the German patent application. The only reference to the European patent application consists of the information to the effect that it has been filed, in which connection the resulting implications for collaboration with a German manufacturer are also mentioned.

4.3.2 The pattern is the same in the second letter, dated 22 April 1991, which was also on file at the Receiving Section: accusation and warning in connection with the German application and (again) merely a statement to the effect that the European application had been filed.

4.3.3 The third letter, dated 26 April 1991 and filed together with the statement of grounds for appeal, differs from the other two in containing neither accusations nor warnings in relation to the German application, but suggests collaboration on the basis of some form of licensing agreement. As to the European application, further information is supplied to the effect that its scope is wider than that of the German application.

4.4 It is thus established that the first two letters mentioned clearly invoke the rights under the German patent application. Nor is this point seriously contested by the respondent.

4.5 The question accordingly arises as to whether the information concerning the filing of a subsequent European application in connection with the invocation of the rights under the German priority application can also be regarded as an invocation of the rights under the European application.

4.5.1 As the appellants correctly pointed out, the letters are addressed to a recipient with a training in patent law. In other words, they must be construed on the basis of their objective content in the light of the relevant legal provisions, with which both parties must be assumed to be familiar.

4.5.2 The decisive legal provision in the present case is Article II, section 8, of the German Law on International Patent Treaties, which prohibits simultaneous protection. In that respect it corresponds to Article 75(1) of the Community Patent Convention and has been incorporated in the legislation of several Contracting States (cf. the brochure "National law relating to the EPC", Table IX, column 2). Under this provision the German patent is ineffective to the extent that it covers the same invention as the European patent. That means that it is only a matter of time until the European patent supplants the German one, with the result that the respondent - regardless of his original intention - will only be able to proceed against potential infringers on the basis of the European patent. (There is no need to decide here what the position would be in cases where no bar exists on simultaneous protection, especially where the priority is derived from a utility model or where the Contracting State of the priority application was not designated.)

4.6 The reference to the existence of a European application in conjunction with the warning based on the German application accordingly constitutes an invocation of the rights under the European patent application. This situation is not altered by the respondent's objection that the European application was only at an early stage, as that is assumed to be the case by Article 128(2) EPC: an unpublished application is, as a rule, at an early stage. As explained above, the sole criterion determining whether or not the applicant has invoked his rights under the relevant application is whether he has given the third party to understand that he intends to do so. That criterion was met in the present case.

4.7 The fact that none of the letters mentions the designation of Germany is of no great consequence. In the first place, it can be inferred from the general practice that Germany was designated. Secondly, the respondent could easily have disproved this inference had it been incorrect.

4.8 Nor was the Board convinced by the arguments advanced by the President's representative.

Whilst it is true that, before the prohibition on simultaneous protection comes into operation, two independent applications exist and the applicant can choose the one he wishes to invoke, he did not in the present case do that. Instead, he availed himself of both options.

4.9 Nor can the respondent any longer invoke the principle whereby applications remain confidential until published. By himself lifting the veil on confidentiality he has relinquished the right to confidentiality as far as the appellants are concerned. If the applicant draws the attention of third parties to his rights, he has to accept that they will wish to acquaint themselves fully with those rights. Only if he has an opportunity to examine the application in its entirety can a third party judge whether or not he is affected by the claims. In this connection, the third letter from the respondent, dated 26 April 1991, is of particular importance, as it expressly states that the European application is wider in scope than the German application. Even if the first two letters were to be regarded solely as invoking the rights under the German application, this additional information, in conjunction with one of the preceding letters, amounts to invoking the rights under the European application.

4.10 Contrary to the view expressed by the President's representative, the reference to the European patent application in all three letters cannot be dismissed as a mere point of information. The respondent did not impart this information to just anyone, but to a competitor. Had he not done so with the intention of influencing the actions of the appellants, he would not have needed to mention the European patent application. It was clear to him that a competitor would react to such information and take it into account in a certain way in his business decisions.

4.11 There is thus no doubt that the rights under the European application have been invoked, and the request to inspect the files must therefore be granted.

5. Article 112(1)(a) EPC requires the Board of Appeal, during the proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

The issue arising in the present case is that of referral of an important point of law to the Enlarged Board following a request.

5.1 There can be no doubt that the respondent's first subsidiary request falls within this category. According to the provision cited above, however, questions must be referred to the Enlarged Board only if the Board of Appeal considers this to be necessary. Such is not the case here, as the Board of Appeal has itself been able to resolve the point beyond any doubt on the basis of the Convention (cf. Decision J 5/81, OJ EPO 1982, 155; T 603/89, OJ EPO 1992, 230).

5.2 The second subsidiary request concerns a matter which does not arise in the present case. This in itself rules out a referral to the Enlarged Board.

5.3 The above conclusions with regard to the first subsidiary request apply equally to the third.

5.4 The request for referral to the Enlarged Board of Appeal must therefore be refused.

ORDER

For these reasons it is decided that:

1. The contested decision is set aside.

2. Inspection of the files of European patent application No. 90 124 892.2 is granted.

3. The subsidiary requests for referral to the Enlarged Board of Appeal are refused.