Quick Navigation
X.3. Extension Ordinances on the extension of European patents
In J 14/00 (OJ 2002, 432) the board observed that the Agreement with the Republic of Slovenia extending the protection conferred by European patents (Extension Agreement), including the associated Extension Ordinance (EO) (OJ 1994, 75) which came into force on 1.3.1994, was based on the Patent Cooperation Agreement between the European Patent Organisation and the Republic of Slovenia, which came into force on 1.9.1993. This agreement was an international treaty of the kind which the President of the EPO is authorised by the Administrative Council to conclude with the Council's approval (Art. 33(4) EPC 1973), in order to carry out the functions assigned to him under the EPC 1973. This agreement served the interests not only of applicants, providing as it did a simple route to patent protection in the Republic of Slovenia, but also those of the Republic of Slovenia, enabling it to offer patent protection for its territory simply by extending the effects of European and Euro-PCT applications and patents.
The Legal Board of Appeal decided on the admissibility of an appeal directed against a letter issued by an EPO formalities officer applying the Extension Ordinance. The board held that, in the case at issue, admissibility was rather precluded by the fact that, according to the exhaustive provision in Art. 106(1) EPC 1973, only those decisions of the EPO may be contested which are taken, within the framework of their duties under the EPC 1973, by the departments listed therein. This was not, however, the case for decisions taken by the EPO when carrying out its obligations under the Extension Agreement, including the EO (OJ 1994, 75).
The Legal Board found that there was nothing in the structure or legal nature of the EO to support the appealability of the letter issued by an EPO formalities officer. The board held that the extension procedure under the EO generates legal effects exclusively on the basis of Slovenian national law. The EO did not include the assignment of sovereign rights to the EPO. It held that the provisions of the EPC 1973 and its Implementing Regulations do not apply unless otherwise provided in the EO. The EO thus made it absolutely clear that its references to provisions of the EPC 1973 are exhaustive and thus that there could be no corresponding application of other provisions, including those of Art. 106 EPC 1973 et seq. on the appeals procedure.
Nor could the appellant invoke the principle of good faith to obtain legal recourse to the EPO's boards of appeal. The board stated that this principle is one of the fundamental principles of European patent law. However, as far as the extension procedure was concerned, the EPO was not acting within the framework of the EPC 1973. In its introduction to the EO, the EPO expressly stated that the EO was based on Slovenian national law only (OJ 1994, 75) and that the extension procedure and its effects were governed solely by Slovenian law (OJ 1994, 80).
In J 9/04 the board also commented on the structure or legal nature of the EO. It noted that, as a bilateral ordinance, the EOs essentially deal - exhaustively and strictly separately from the Convention - with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states (see, for Slovenia, BlfPMZ 1993, 303 - German periodical). This includes, in particular, the conferral of the same effects on extended applications and patents as on national ones, the obligation to provide the national patent offices with a translation of the claims into the respective language, the national authentic text of extended applications and patents, their prior-art effect with respect to national applications and patents, and, finally, simultaneous protection. According to the board, none of these provisions give rise to any obligations on the part of the EPO. Under the EOs, the EPO merely undertakes vis-à-vis the national patent authorities to assist with the administrative tasks associated with the extension of European patents, namely receiving requests for extension, levying extension fees and, after deducting an amount to cover its expenses, forwarding the remaining amount to the national patent offices.
It was also stated that it was clear from their provisions that the EOs were governed by the principle of minimal intervention in the sovereign rights of the extension states. The Convention, on the other hand, was based inter alia on the delegation of national sovereign rights to the EPO, on the participation and the controlling function of the Administrative Council in the administration of the EPO, and on the division of renewal fees between the EPO and the contracting states involved.
The board observed that the EO did not afford any of the rights and obligations associated with accession to the Convention. Contrary to the appellant's assertion, it thus did not set up a jus tertii for services rendered by the EPO in fulfilment of its obligations under the EO either. As a result there was no right of recourse to the boards of appeal in respect of extensions of patent applications and patents to the extension states. Instead, in cases such as the one at issue, it was the respective national jurisdiction which was responsible. For example, Art. 6(2) of the Slovenian Law provides for appeal proceedings against decisions of the Slovenian Patent Office (see also J 2/05).