T 0272/90 (Competence of Legal Board of Appeal) of 6.8.1990

Summary of Facts and Submissions

I. By interlocutory decision an Opposition Division of the EPO concluded that European patent No. 74 676 could be maintained in amended form. When this decision became final, a communication dated 16 January 1989 was issued under Rule 58(5) EPC giving the Patentee three months to pay the fee for printing a new specification of the European patent and file translations of the amended claims in the other two EPO official languages.

II. The printing fee was paid in due time, but no translations of the claims were filed. By communication dated 20 September 1989 under Rule 58(6) EPC the EPO drew this to the Patentee's attention and informed him that he could still validly file the translations within two months of service of the communication, provided that within the same period he also paid a surcharge amounting to twice the printing fee. According to the Patentee, the translations were filed by letter dated 8 November 1989. The surcharge however was not paid.

III. By decision dated 21 December 1989 a formalities officer revoked the European patent under Article 102(5) EPC. Attention was drawn to the possibility of appeal. None of the EPO's communications drew attention to the possibility of restitutio in integrum under Article 122 EPC.

IV. On 26 January 1990 the Patentee lodged an appeal against this decision and paid the appeal fee. He filed a Statement of Grounds on 20 April 1990. He submits in the main that the contested decision has no legal basis: a patent can be revoked under Article 102(5) EPC because of failure to file the translations in due time, but not because of non-compliance with the period of grace under Rule 58(6) EPC. Following a comment by the Rapporteur, the Patentee subsequently filed a request for re-establishment of rights in respect of the period of grace under Rule 58(6) EPC. The Appellant (Patentee) requests that the contested decision be set aside and the patent maintained.

V. The Respondent (Opponent) requests that the appeal and application for re-establishment of rights be refused.

Reasons for the Decision

1. The appeal is admissible as far as the usual requirements are concerned. However, decisions by another Board of Appeal raise the question of whether an appealable decision has in fact been taken, or whether in a case such as this the loss of rights (revocation of the patent) has already occurred automatically by operation of law and an appeal is possible only after application of Rule 69(1) and (2) EPC (cf. T 26/88 dated 7 July 1989, published in OJ EPO 1991, 30, T 522/88 and T 114/89).

2. In addition to this point of law, however, the present case also raises other purely legal questions, including that of the general relationship between basic time limits (in this instance for filing the translations) and periods of grace (for paying a surcharge amounting to twice the printing fee) and under what conditions re-establishment of rights in respect of either or both time limits is possible and necessary.

3. Technical Boards of Appeal have in the past taken many other decisions on purely legal matters, namely appeals against decisions taken - as in this case - by formalities officers on behalf of Examining or Opposition Divisions by virtue of Notices from the EPO dated 15 June 1984 (OJ EPO 1984, 317 and 319), as amended by the Notice dated 1 February 1989 (OJ EPO 1989, 178; see also Singer, "Kommentar zum EPU", Annex 7, page 877 and Annex 8, page 880 for discussion of text as amended).

3.1 Such decisions - although hitherto taken by Technical Boards - are concerned solely with legal questions. For example, all decisions relating to "deposit accounts" (cf. Notice in OJ EPO 1982, 15) have been taken by Technical Boards of Appeal (see list in Singer op. cit., page 889). Other decisions concern the application by formalities officers of Article 99 in conjunction with Rules 55 and 56 EPC, i.e. the purely legal side of the admissibility of oppositions.

3.2 That the Technical Boards should have hitherto been considered competent for appeals of this kind is the result of Article 21(3) and (4) EPC having been interpreted to mean that the Technical Boards are competent for each and every opposition matter. Article 21(4) EPC does not mention the Legal Board as an appeal instance for opposition matters. According to this interpretation of Article 21(4) EPC, the Legal Board of Appeal would not be competent even for appeals against decisions taken by formalities officers and of a purely legal nature. For appeals relating to examination matters, Article 21(3) EPC makes competence of the Legal Board of Appeal dependent inter alia on whether the contested decision concerns "the refusal of a European patent application or the grant of a European patent". Hence the practice to date of considering the Legal Board competent essentially only for decisions involving noting a loss of rights (Rule 69(2) EPC).

3.3 The results of this application of Article 21 EPC are also unsatisfactory as regards decisions taken by formalities officers in Examining Division matters. Points 1 to 6 for example in the list of entrusted duties relate to responsibilities identical in substance to those of the Receiving Section. With the present interpretation of Article 21 EPC, this would mean that where the contested decision concerns formal deficiencies (e.g. in designating the inventor), payments, appointment of representatives, authorisations and the like, the Legal Board of Appeal is competent under Article 21(2) EPC for contested decisions taken by the Receiving Section; but a Technical Board becomes competent immediately responsibility for examination of the European patent application passes to the Examining Division under Article 18(1) EPC. Failure to file an authorisation would go to a Technical Board if the ensuing legal consequence is refusal of the application, but to the Legal Board if the result is deemed withdrawal of the application (cf. Rule 101(4), 3rd sentence, EPC). If the case concerns paying the printing fee and filing translations of the claims prior to grant, the Legal Board is competent. But if it concerns the same requirements after grant, i.e. in opposition proceedings, it goes to a Technical Board. However, a look at the two lists of duties entrusted to formalities officers makes it clear that only matters of a purely legal nature are involved.

3.4 For the reasons set out above it is doubtful whether Article 21(3) and (4) EPC should be regarded as also governing competence for appeals against decisions taken by formalities officers under their entrusted duties. The duties mentioned in Rule 9(3) EPC and appeals arising from them were in all probability simply not taken into account in Article 21 EPC.

3.5 For this reason, the point of law in the Order is referred to the Enlarged Board of Appeal. It is so worded that should the Enlarged Board decide in the affirmative, the Legal Board of Appeal 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. It is quite conceivable in cases posing legal difficulties for the divisions to decide the matter themselves with the assistance of a legally qualified member (examples in OJ EPO 1984, 117; 1984, 565; 1986, 56). In such cases it would be all the more justified for the Legal Board to handle any appeal.

4. In the opinion of the referring Board, this point of law also raises the question of whether the President of the EPO can delegate his powers of entrustment under Rule 9(3) EPC. For the introduction to the aforementioned Notice (OJ EPO 1984, 317 and 319) indicates that the Vice-President Directorate-General 2 entrusted the duties in question by virtue of powers delegated to him by the President under Article 10(2)(i) EPC.

4.1 Entrustment of duties under Rule 9(3) EPC is a law-making act re-allocating competence by derogation from Article 18(1) and Article 19(1) EPC. The Convention, the Implementing Regulations and the Rules relating to Fees give the President of the EPO various law-making powers, the introduction of "deposit accounts" under Article 5(2) of the Rules relating to Fees (cf. OJ EPO 1982, 15) being just one further example.

4.2 Under Article 10(3) EPC the President of the EPO is "assisted by a number of Vice-Presidents". This presupposes that the Vice- Presidents have their own areas of responsibility. The delegation of law-making powers to one of them would thus preclude the co- responsibility of the others. For such powers then to be further delegated would even preclude the co-responsibility of much of the EPO. This becomes questionable when - as here - the co- responsibility of the Vice-President competent for legal affairs is precluded, especially bearing in mind that entrustment under Rule 9(3) EPC presupposes that the duties involve "no technical or legal difficulties". With the "Arrangements for deposit accounts" too it would be difficult to imagine the Vice-President competent for legal affairs bearing no co-responsibility and the law-making powers being entrusted to departments of Directorate- General 4. The delegation of such powers is particularly questionable when it takes 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.

ORDER

For these reasons, it is decided that: The following point of law is referred to the Enlarged Board for decision: Is the Legal Board of Appeal competent for appeals against decisions entrusted to formalities officers under Rule 9(3) EPC?