J 0003/95 (ETA) of 28.2.1997

Summary of Facts and Submissions

I. On 7 October 1994, ETA SA Fabriques d'Ebauches filed a notice of appeal against the decision of the Legal Division of the European Patent Office dated 5 August 1994, at the same time paying the appeal fee. The statement of grounds for appeal, received on 7 December 1994, contained the following requests:

- that the decision of the Legal Division of the European Patent Office dated 5 August 1994 be set aside;

- that the date of filing of the appellant's application for re-establishment of rights of 16 January 1992 be ordered to be entered in the Register of European Patents;

- that the entry recording the revocation of European patent No. 0 098 239 by decision of the board of appeal on 25 November 1991 be odered to be deleted from the Register of European Patents with effect from 25 November 1991;

- that a refund of the fee paid on filing the present appeal be ordered;

- that a date be set for oral proceedings in accordance with Article 116 EPC.

II. In the decision under appeal, the Legal Division stated that it had no powers to decide on the two requests submitted on 11 November 1992 by ETA SA in which it asked that the following actions be taken with respect to the Register of European Patents:

- that the filing date of an application for re-establishment of rights, filed among others by the appellant on 16 January 1992 before Technical Board of Appeal 3.5.2, be entered, in order to have its right restored to further prosecution in case T 456/90 on the basis of amended claims;

- that the entry recording the revocation of European patent No. 0 098 239 by decision T 456/90 taken on 25 November 1991 by the above board be deleted with effect from 25 November 1991.

III. ETA SA stated that these two requests were a response to the above decision dated 25 November 1991 in which Technical Board of Appeal 3.5.2 revoked patent No. 0 098 239 without taking account of the patent proprietor's proposal to amend its claims in the light of possible objections by the board of appeal.

By a letter of 31 July 1992, however, the Chairman of Board of Appeal 3.5.2 informed the appellant's professional representative that no action could be taken in response to the requests submitted on 16 January 1992. In a subsequent letter dated 28 September 1992, the Vice-President responsible for the boards of appeal informed the same professional representative that decision T 456/90 was final and not therefore subject to review. On 11 November 1992 the appellant's professional representative therefore filed the requests addressed to the European Patent Office's Legal Division.

IV. In the decision under appeal, the Legal Division stated that, on the date on which the case was referred to it, all the proceedings laid down by the EPC and relating to the patent in question had indeed been concluded, not least because the decision to revoke the patent at the end of the appeal proceedings had had the effect of ending the proceedings once and for all. From that time, no department had the power to reverse the decision, and the Legal Division could only refuse to give a decision on the requests of 11 November 1992.

V. ETA SA elaborated the following arguments in support of the present appeal:

1. On the requests relating to the Register of European Patents Article 127 EPC states that the European Patent Office must keep a register which must contain those particulars the registration of which is provided for by the EPC. When the case has reached a stage where such an entry is necessary, the appropriate authority must automatically make the entry. The entries the Register must contain are set out in Rule 92 EPC, which has been amplified by the Notices of the EPO President. A list of all the entries the Register is to contain can be deduced from these texts.

2. On the powers of the Legal Division and those of the Board of Appeal

Article 15(e) EPC provides that the Legal Division is one of the departments charged with the procedures laid down by the EPC. Article 20 EPC states that the Legal Division is responsible for decisions in respect of entries in the Register of European Patents. There is therefore no doubt as to its powers to pronounce on the matter of entries or to decide on the requests submitted by the appellant on 11 November 1992.

It is the Legal Division's duty to check that the particulars to be entered appear on the above list. The Division does not have any power to give either a preliminary or a final decision on the substance of the proceedings giving rise to an entry. It has to restrict itself to establishing the facts but not consider them. The Register's main aim is to provide information to the public and to confirm which proceedings are in progress. An entry must therefore be made in the Register as soon as proceedings are initiated, irrespective of any consideration of the merits or even the admissibility of the request.

Under Article 111 EPC, the board of appeal may "either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution". The present Board of Appeal therefore has the power to order that the filing date of the application for re-establishment of rights be entered in the Register of European Patents, and that the entry recording the revocation of the patent be deleted from the Register.

Since the requests of 11 November 1992 were submitted, the content of the Register of European Patents has remained unchanged, which gives a wrong impression of the state of the proceedings relating to patent No. 0 098 239. Owing to the public nature of the Register, this misrepresentation of the patent's status may mislead third parties. The legal certainty which is the reason for the Register's existence is therefore in jeopardy. The EPO needs to put an end to this dangerous state of affairs by the quickest procedural route for remedying the situation.

3. On the entry in the Register of the filing of the application for re-establishment of rights

This application, which was filed on 16 January 1992, has never been withdrawn and is therefore still pending. Point 3 of the Notice of the EPO President dated 22 January 1986 (OJ EPO 1986, 61) states that the date of receipt of the application for re-establishment of rights will be entered in the Register of European Patents. Following the filing of the application on 16 January 1992, the Legal Division was obliged to have the pending proceedings entered in the Register.

4. On the deletion from the Register of the entry recording the revocation of the patent

Board of Appeal 3.5.2 has still not pronounced on the admissibility of the appeal filed on 16 January 1992 against decision T 456/90 dated 25 November 1991 and issued following oral proceedings held on 23 October.

On 24 October 1991, the day after the oral proceedings, the appellant's professional representative informed the chairman of the board in writing that the patent proprietor was willing to amend the patent in the light of possible objections which the board of appeal might take into account.

The board of appeal did not grant this request, however, although it does explicitly refer to it in its decision. The decision was then given by Board of Appeal 3.5.2, exercising the powers of the opposition division under Article 111 EPC. This was therefore a decision within the jurisdiction of the opposition division and given by the board of appeal acting as a department of first instance. This decision must be subject to appeal.

As long as no decision is given as to the admissibility and/or the merits of the appeal of 16 January 1992, the appeal will therefore continue to have suspensive effect as provided for in Article 106(1) EPC. The entry recording the revocation of the patent should not then remain on the Register. The Legal Division must therefore order the revocation entry to be deleted.

Furthermore, the decision of 25 November 1991 cannot take effect owing to serious procedural irregularities having occurred.

VI. In a communication dated 25 September 1996, the rapporteur invited the appellant to comment on the possible dismissal of the present appeal mainly on the ground that board of appeal decisions are final; that they become final and enter into force on the date of their notification; that, in the case in point, the proceedings relating to European patent No. 0 098 239 were concluded by the decision to revoke the patent on 25 November 1991; that this decision is therefore no longer subject to appeal; that, after the above decision, the only possible entry in the Register appeared to be that recording the revocation of the patent.

VII. Emphasising the facts and conclusions set out in point V above, the appellant stated in its comments submitted in response that, in its view, its right to be heard had been violated in case T 456/90 which had resulted in a decision to revoke its patent. It added that, since that time, it had met with a refusal to give a decision on the part of the appropriate European Patent Office departments, particularly the technical board of appeal, which refused to give a decision: (1) on the admissibility of the application for re-establishment of rights and (2) on the appeal against the above board's decision dated 25 November 1991, both of which were filed on 16 January 1992. It therefore saw itself as the victim of a denial of justice.

Relying on point 3.2 of the Reasons for decision G 5/88 (OJ EPO 1991, 137), which maintained that the principle of legitimate expectations, which was established within the jurisprudence of the boards of appeal, was applicable having regard to the good faith existing between the EPO and its users, the appellant stated that it was merely requesting compliance with the rules of procedure established by the EPC, and it maintained that Board of Appeal 3.5.2 had denied it justice by refusing to decide the legal matters referred to it.

It concluded that its requests raised important points of law relating to the following:

- as to the application for re-establishment of rights, observance of the right to be heard;

- as to its appeal against the decision dated 25 November 1991, the right for a decision to revoke a patent to be reviewed when the revocation decision is given for the first time by the board of appeal.

On the second point, the appellant stated that, under Article 32 of the TRIPS (Trade-Related aspects of Intellectual Property Rights) Agreement, member states must provide an opportunity for judicial review of any decision to revoke a patent. The appeal of 16 January 1992 therefore raised the question as to how the European Patent Convention was to be interpreted in order to be compatible with this article of the TRIPS Agreement.

VIII. During the oral proceedings held on 28 February 1997, the appellant repeated its arguments and stressed that the purpose of its two requests of 16 January 1992 was to obtain a review of the decision dated 25 November 1991. In the present proceedings, wishing the matter to be referred to the Enlarged Board of Appeal, it formulated the following final requests:

1. that the decision of the Legal Division of the European Patent Office dated 5 August 1994 be set aside;

2. that it be found that the requests submitted by the appellant before Board of Appeal 3.5.2 on 16 January 1992 are pending;

3. that it be declared that the Legal Division has the power to consider the requests submitted on 11 November 1992;

4. this having been done, that the present board, exercising the Legal Division's powers under Article 111 EPC, order:

(a) that the filing date of the appellant's application for re-establishment of rights (16 January 1992) be entered in the Register of European Patents;

(b) that the entry recording the revocation of European patent No. 0 098 239 by a board of appeal decision dated 25 November 1991 be deleted from the Register of European Patents with effect from 25 November 1991 on the grounds of:

(i) the filing of an appeal having suspensive effect against this decision, and

(ii) the material procedural irregularity affecting the decision dated 25 November 1991.

Finally, it requested that the fee paid for the present appeal be reimbursed.

Reasons for the Decision

1. The appeal filed against the decision of the Legal Division dated 5 August 1994 is admissible. The purpose of the present proceedings is to determine whether or not that Division had the power to consider the requests submitted to it on 11 November 1992 by ETA SA Fabriques d'Ebauches, and, if necessary, to establish whether or not the requests should be granted.

2. As to the subject of powers, Article 15(e) EPC states that the Legal Division is one of the European Patent Office departments charged with the implementation of the procedures laid down by the European Patent Convention. Article 20(1) EPC provides that this Division shall be responsible in particular for decisions in respect of entries in the Register of European Patents. Furthermore, in decision J 18/84 (OJ EPO 1987, 215, see points 2.4 and 2.5 of the Reasons) it has already been found that, pursuant to these texts, an entry in the Register of European Patents falls within the scope of the administrative procedure but that, once the EPO refuses or contemplates refusing to make the said entry, only the Legal Division has the power to take a decision. Since, in the present case, it appears that the EPO refused to grant the requests submitted by ETA SA regarding the entries in the Register, the Legal Division did have the power to take a decision, firstly, to explain the grounds for this refusal and, secondly, to give the appellant leave to appeal.

3. As to the merits of the case, the board finds that the purpose of all the requests submitted by ETA SA following decision T 456/90 was to obtain a review of the decision and the suspension of the effects of the decision pending that review. That is true irrespective of how they have been defined. It is the case with the application for re-establishment of rights and the notice of appeal, both submitted by the appellant on 16 January 1992, and it is also true of the requests which it filed with the Legal Division on 11 November 1992. The decision to be taken in the present appeal therefore depends, firstly, on the reply to the question as to the action to be taken in response to such requests and, secondly, if such actions are or are not to form the subject of entries in the Register of European Patents.

In this connection, two possible courses of action emerge from the summary of facts and submissions forming the first part of this decision:

- jurisdictional action as requested by the appellant, there being two options, namely, reopening the appeal at issue or entering a new appeal against the appeal at issue;

- administrative action as taken by the Chairman of Board 3.5.2 and the Vice-President responsible for the boards of appeal, who, after finding that the action requested by the appellant did not appear to them to be compatible with the provisions of the EPC, advised it by mail that its requests would not be considered.

A third course of action might involve a special jurisdictional procedure equivalent to the principles generally adopted for this purpose in the contracting states.

On reopening the appeal proceedings or entering a new appeal

4. Article 21(1) EPC and its corollary, Article 106(1), state that, within the European Patent Office, the boards of appeal are the last instance responsible for the application of the procedures laid down by the EPC. Article 106(1) does not specify that an appeal shall lie from decisions of the boards of appeal, and Article 21(1) EPC limits the responsibility of these boards to the examination of appeals from the decisions of the Receiving Section, examining divisions, opposition divisions and of the Legal Division. Once the board of appeal has taken a decision concluding an appeal, therefore, the case is finally closed as far as internal EPO procedures are concerned. Since the boards of appeal do not have the power to review their own decisions, and as the EPC did not create an authority for this purpose, their decisions become final and enter into force on the date they are issued or notified.

5. This is confirmed by European Patent Office board of appeal case law, which is based mainly on the principles arising from the maxims Res judicata pro veritate accipitur (the final decision is held to be the truth) and Lata sententia, judex desinit esse judex (once the decision has been given, the judge ceases to be judge). These are generally accepted rules of procedure in the contracting states.

6. The principle arising from the res judicata maxim is based on the need for an end to all litigation. It is generally accepted and provides legal certainty, while taking account of the general public concern for the settlement of disputes (expedit rei publicae ut finis litium sit). It protects everyone from becoming lost in a bureaucratic maze of legal proceedings. Parties are not to become embroiled in proceedings on precisely the same question more than once (nemo debet bis vexari pro una eadem causa). It therefore prohibits parties from challenging what has already been decided. Once all the usual available remedies have been exhausted, a decision becomes final, that is to say, its enforcement can no longer be suspended by an appeal. It cannot therefore be challenged except by any special remedies which may be provided for this purpose in the law.

6.1 In board of appeal case law, the effect of the principle arising from the res judicata maxim is the same as that attributed to a judgment which has become final, as specified in point 3 of the Reasons for decision T 934/91 (OJ EPO 1994, 184):

"... it defines... a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies (see Black's Law Dictionary, 5th Edition). Such a final judgment by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies".

It seems clear that the phrase "rendering that matter conclusive" used in decision T 934/91 above means the same as a "judgment which has become final".

The following decisions illustrate established board of appeal case law on this matter: T 79/89 (OJ EPO 1992, 283), T 678/90 dated 23 November 1994 (not published in the OJ EPO), T 690/91 dated 10 January 1996 (not published in the OJ EPO), T 934/91 (OJ EPO 1994, 184), the interlocutory and final decisions in case T 843/91 (OJ EPO 1994, 818, and OJ EPO 1994, 832), T 167/93 (for publication in the OJ EPO).

6.2 The principle of a decision which has become final (res judicata) is supported by the doctrine "Once the decision has been given, the judge ceases to be judge" (Lata sententia, judex desinit esse judex). This means that the dispute is no longer before the court which has settled it, once the judgment has been given or notified, depending on the circumstances. The court whose decision has become final cannot review its decision again, even with the parties' consent. All that generally remains is the possibility of correcting obvious mistakes of a purely material nature (see Rule 89 EPC).

6.3 The principle of a decision which has become final applies to decisions of a judicial nature, that is to say, decisions taken by a court. In this connection, the Enlarged Board of Appeal clearly established in decision G 1/86 (OJ EPO 1987, 447, point 14 of the Reasons) that the European Patent Office boards of appeal act as courts.

The status of the boards of appeal was also recently addressed by the High Court of Justice in the United Kingdom (Patents Court) in R. v The Comptroller of Patents, Designs and Trade Marks ex parte Lenzing AG. The High Court held that "the final arbiter of revocation under the new legal system [of the EPC] is to be the Board of Appeal of the EPO", and that "the UK and the other Member States have agreed at an international level via the EPC that the BoA is the final arbiter of oppositions. It is the agreed EPO equivalent of the House of Lords, Cour de Cassation or Bundesgerichtshof... Those who apply for patents in the EPO must accept the results of its findings and its methods of procedure". This decision also acknowledged that the EPO boards of appeal constitute a specialised court exercising judicial authority within the meaning of Article 32 of the TRIPS Agreement.

7. Furthermore, this Board considers that serious disadvantages could arise from any reopening of a case once a European Patent Office board of appeal decision has become final. The same disadvantages would arise if a new appeal were entered against the appeal at issue.

7.1 Article 106(1) EPC states that any appeal has suspensive effect. If an appeal against a board of appeal decision were to be deemed admissible, the new appeal would be subject to the same rules of procedure as the previous one and would therefore have suspensive effect, thus preventing the decision appealed against from having legal effects. This would also mean that a decision under appeal could have no legal effects at least until the date on which the board of appeal hearing the new appeal gave its decision (see J 28/94, OJ EPO 1995, 742). This would create considerable uncertainty as to the time when board of appeal decisions become enforceable, and such uncertainty could be permanent. In practice, as soon as the new appeal case was opened, the appellant would enjoy the rights enjoyed by any party to proceedings before the EPO. In particular, the provisions of Articles 110, 113 and 116 EPC would apply. According to Article 110 EPC, the board must invite the parties, as often as necessary, to file observations on communications from another party or issued by itself. Under Article 113 EPC, board of appeal decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Finally, under Article 116 EPC, oral proceedings have to take place as soon as any party to the proceedings requests it. Neither the reopening of an appeal where the appeal decision is at issue nor the entering of a new appeal enables an allegation of a violation of a fundamental procedural principle to be examined rapidly and a decision then to be taken promptly.

7.2 There are other negative aspects associated with the entering of a new appeal or the reopening of an appeal case. If such courses of action were allowed, they might be used purely as delaying tactics. The effects would be all the more unmanageable since a procedure of this kind, which would have to be concluded by a new board of appeal decision, might then in the same manner become the subject of a new dispute in which the violation of a fundamental procedural principle was again relied on. The appeals could go on ad infinitum.

7.3 Such consequences would be likely to upset the general equilibrium of the system based on the European Patent Convention by possibly extending, out of all proportion, the procedure up to grant.

On the administrative mail reply

8. In this case, the action taken by the Chairman of Board 3.5.2 and by the Vice-President with responsibility for the boards of appeal in response to the requests of 16 January 1992, namely the replies by mail, may be held to be purely administrative objections to admissibility. This practice is that adopted for responses to the few requests of this type which have been submitted to the boards of appeal since they were first created. They are strongly objected to by the appellant, mainly because they do not provide a solution to the substance of the questions raised.

On a special course of action through the courts

9. A judgment generally remains final even if it is challenged on an irregularity (a violation of a fundamental procedural principle, for example) by means of a special appeal. The law provides such remedies in a number of the contracting states and before the Court of Justice of the European Communities (see Art. 41 of the Second Protocol on the Statute of the Court).

9.1 In France, for example, the purpose of a petition for review is to have a decision which has become final withdrawn (Articles 593 ff of the Nouveau code de procédure civile - NCPC); it is termed a special appeal, its main features being that enforcement is not suspended (Article 579 NCPC) and that it cannot be challenged by a new petition for review (Article 603 NCPC). Other countries have similar remedies available to parties against decisions which have become final. This is the case in Spain, for example, with the "Recurso de revisión" governed by Articles 1796 to 1810 of the Ley de Enjuiciamiento Civil (LEC) and in Italy, where there is a "Revocazione straordinaria" provided for in Article 395 of the Codice di procedura civile. It is also the case in Switzerland, which provides for various possibilities at both cantonal and federal level: there is the recours de nullité (Art. 68 ff of the Loi fédérale d'organisation judiciaire), the révision d'un arrêt du Tribunal fédéral (Art. 136 ff OG), and the recours de droit public (Art. 84 OG). In Austria, there is the Nichtigkeitsklage (Section 529 of the Zivilprozessordnung - ZPO) and the Wiederaufnahmeklage (Section 530 ZPO). German law makes a similar provision with the Wiederaufnahme referred to in Section 578 of the Zivilprozessordnung. These remedies, which are frequently referred to as special, do not have suspensive effect except in the case of Italy. In all cases they are provided for by the law in addition to the usual means of obtaining redress. While the cases where proceedings may be initiated are set out restrictively by the law in the majority of the countries referred to by way of example, in the case of the recours de droit public in Switzerland the Federal Court may infer new violations of rights giving rise to an appeal from the principle of equality, which is itself provided for in the law. In the English system, after the usual remedies have been exhausted, the court may set aside its own final decision in a limited number of cases following a serious irregularity such as a violation of a fundamental procedural principle (Craig v Kanssen [1943] 1 KB 256, [1943] I All ER 108, CA). One criterion for deciding the seriousness of the breach of procedure is to determine whether it constitutes a failure to observe the principles of natural justice (Marsh v Marsh [1945] AC 271 at 284) (see Halsbury's Laws of England, Fourth Edition, Vol. 26, 556).

9.2 The EPC texts do not provide for similar procedures. Only Article 23 of the Regulation on discipline for professional representatives provides for the possibility of the revision of a final decision by the disciplinary bodies.

Referral to the Enlarged Board of Appeal

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

According to the present Board, the question as to the administrative or jurisdictional procedure to be adopted by the boards of appeal in response to requests such as those submitted in the case in point raises an important point of law, since neither the EPC nor the case law or procedural or administrative practices of the boards of appeal provide a clear answer.

Similarly, the question arises as to whether or not the procedure to be adopted will have to be entered in the Register of European Patents.

ORDER

For these reasons it is decided that:

The following questions concerning an important point of law are referred to the Enlarged Board of Appeal:

1. In the context of the European Patent Convention, what administrative or jurisdictional measures should be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a decision taken by a board of appeal with the force of res judicata?

2. If necessary, should it be required that these be entered in the Register of European Patents?