J 0005/08 (Device for detecting the presence or absence of a liquid/CANON KABUSHIKI KAISHA) 09-07-2009

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC 1973 and is therefore admissible.

As regards the EPC 2000, which entered into force on 13 December 2007, the present Board follows the reasoning in decision J 10/07 (OJ EPO 2008, 567, points 1.1, 1.2 and 1.3 of the Reasons) that the provisions of Article 106 to 109 EPC 1973 and the Implementing Regulations 1973 which are linked to these Articles are to be applied in the present case.

2. The same applies for the application of Rule 25(1) EPC 1973 stipulating the requirements for filing a divisional application and which reads as follows: "The applicant may file a divisional application relating to any pending earlier European patent application".

Object of the appeal in the parent application

3. The Board first needs to clarify the situation with respect to the procedural acts and events in the parent application. In particular, the Board does not share the Receiving Section's conclusion that the notice of appeal filed on 23 March 2006 was directed against the omitted notification of the decision allegedly taken by the first examiner on Form 2035.3 or the conclusion as to the effect of the decision made by the Examining Division under Article 109(1) EPC.

4. The Receiving Section argued that since the mention of the grant of the patent in the parent application took place on 8 March 2006 the pendency of the parent application came to an end on that date and, furthermore, that the request for correction pursuant to Rule 89 EPC filed on 3 February 2006 as well as the appeal filed on 23 March 2006 did not alter the procedural situation with respect to the requirements for filing a divisional application.

In this regard, the Receiving Section regarded the first examiner's amendment to the EPO Form 2035.3 as a decision to correct the decision to grant and concluded that the appeal, although on its face directed against the decision to grant, should in fact be interpreted as having been directed against a missing notification in order to avoid the conclusion that the appeal was inadmissible. The reasons why this conclusion was incorrect are explained by the following.

5. The version of Form 2035.3 which was signed on 7 February 2006 with its handwritten amendments cannot be interpreted as a decision pursuant to Rule 89 EPC 1973. Form 2035.3 is only concerned with the administrative measures to be taken regarding the documents for the grant of the patent. Using this form, the publication of the decision to grant is prepared. Neither the form as originally worded nor the handwritten amendments to it, even if signed by the first examiner, are capable of constituting a decision. As discussed further below, what constitutes a decision is an objective question, but it can be pointed out that the first examiner was obviously not aware at the time that a decision to correct the decision to grant was required and was also obviously of the opinion that it would be sufficient to correct the data in Form 2035.3. Otherwise he would not have acted in this way. There is nothing in the file from which it can be concluded that the first examiner intended to take a decision pursuant to Rule 89 EPC 1973, something which could only be done by all three members of the Examining Division. An act made to amend an internal administrative measure cannot be interpreted as a decision solely because such a decision was legally required in order to correct the decision to grant. The Examining Division was obviously of the same view since on 12 June 2006 it took the requested decision by using EPO Form 2051, Part 6, which was headed "Correction of the decision" (see point II(h) above and points 8, 9 and 10 below). Furthermore, the Receiving Section concluded (cf. point 4.3 of the Reasons) that: "As soon as a decision exists, as in the present case the decision under Rule 89 EPC, an appeal can lie from it under Article 106 EPC and the appeal may be directed against defects of the decision, as e.g. the missing notification." The latter conclusion "as e.g. the missing notification" was obviously erroneous since an omitted notification of a decision does not constitute an appealable decision in terms of Article 106(1) EPC 1973.

In any event, however, a document such as a notice of appeal must be construed objectively having regard to its wording, the context of the proceedings (see, e.g. T 01/88 of 26 January 1989, point 1.1.2 of the Reasons) and, where there remain doubts, on the basis of an objectively correct interpretation of the appellant's interests (see J 06/08 of 27 May 2009, point 4, 6.3 et seq., in particular point 7 of the Reasons). In the present case the notice of appeal filed on 23 March 2006 stated clearly that it was being filed against the decision to grant dated 26 January 2006, in respect of which interlocutory revision was requested. Admittedly the notice of appeal (which also contained the grounds of appeal) refers to the amendment to Form 2035.3 which had taken place on 7 February 2006, and which by this stage the appellant had discovered by inspection of the public file. In point 4.3 of its decision the Receiving Section said that in the notice of appeal the appellant had criticised the fact that the appellant had not received written notification of the correction, and that "thus" the appeal "had" to be interpreted as being directed against the missing notification. However, the notice of appeal does not contain any such criticism and there is nothing else in the notice of appeal which can be objectively construed as an appeal against any failure of the Office to notify the appellant of the decision. There was therefore no justification for interpreting the notice of appeal contrary to its plain wording. This is all the more so since that interpretation would indeed have resulted in the appeal being inadmissible (see J 06/08 loc. cit).

As a result of the foregoing considerations, the basis for the Receiving Section's interpretation of the notice of appeal as having been directed against a missing notification of the "decision" contained in Form 2035.3 falls away.

Hence, the appeal is to be construed as having been directed against the decision to grant of 26 January 2006 and appeal proceedings concerning the grant procedure were thereby initiated.

6. These errors both as to the legal status of the amendment to Form 2035.3 and as to the nature of the appeal led the Receiving Section to reach an incorrect conclusion as to the nature and effect of the decision made by the Examining Division under Article 109(1) EPC on 12 June 2006. This conclusion is not in fact very clearly stated in the Receiving Section's decision but can be summarised as follows: since the order under Article 109(1) EPC was made in an appeal relating to an application to rectify a decision to grant under Rule 89 EPC, the order had the effect of rectifying the decision under Rule 89 EPC. This in turn meant that the application had not become pending, as would have happened if an admissible appeal had been filed against the decision to grant. This can be gathered from the rather confusing passages in paragraphs 4.4 and 5 of the decision, which run as follows:

"The decision rectifying the decision under Rule 89 EPC in the framework of the interlocutory revision pursuant to Article 109(1) EPC does not state the grounds for ordering the rectification, but the title of the "Correction of a decision under Rule 89 EPC" issued on 21.06.2006 reflects this interpretation of the appeal by the examining division" (point 4.4 of the Reasons).

"The successful appeal resulting in the rectification of the decision to correct the decision to grant pursuant to Rule 89 EPC had only suspensive effect with regard to the decision to correct. Since the decision pursuant to Rule 89 EPC itself does not set aside the decision to grant ... the appeal did not reopen the possibility to file a divisional application" (point 5 of the Reasons).

7. The Receiving Section's problem appears to have arisen from the fact that the Examining Division had rectified the decision to grant under Rule 89 EPC 1973 and simultaneously had taken a decision to revise the decision to grant under Article 109(1) EPC. However, the Receiving Section's reasoning that the successful appeal resulted in the rectification of the decision to correct the decision to grant pursuant to Rule 89 EPC 1973 had no legal basis in the EPC. The request for correction under Rule 89 EPC and the appeal have to be dealt with separately and differently. Firstly, there is no procedural provision whereby an appeal can (if successful) result in a decision pursuant to Rule 89 EPC 1973, since the outcome of appeal proceedings is governed only by the provisions of Article 109 to 111 EPC 1973. Secondly, as already explained, the starting point of the Receiving Section was already incorrect because the appeal was directed against the decision to grant dated 26 January 2006 and not against the alleged "decision" on EPO Form 2035.3 to correct the decision to grant.

8. Therefore, it is correct that a decision pursuant to Rule 89 EPC 1973 to correct the decision to grant was made by the Examining Division by using EPO Form 2051 on 12 June 2006 but it is not correct that a separate decision pursuant to Article 109 EPC 1973 was not also made in relation to the decision to grant on the same day. Once again, a decision of the Office such as this must be construed objectively having regard to the context of the proceedings. In the decision dated 12 June 2006 as recorded on Form 2701 the three examiners stated that:

- the appeal is allowable and well-founded;

- the decision is rectified (Article 109(1) EPC 1973); and

- reimbursement of the appeal fee is ordered.

This clear wording corresponds precisely to Article 109(1) EPC 1973 and from an objective viewpoint makes it clear that the Examining Division had decided to take a separate decision pursuant to Article 109(1) EPC 1973. Furthermore, the Examining Division clearly regarded the appeal proceedings as terminated by this procedural act: otherwise it would have referred the case to the Boards of Appeal (see Article 109(2) EPC).

9. What is not stated in the decision as set out in Form 2701 or in the subsequent communication to the appellant dated 21 June 2006 is what form the interlocutory revision, or rectification, took. However, what was ordered can only have been the interlocutory revision of the decision to grant so as to amend it in accordance with the appellant's letter of 3 February 2006. This follows having regard to the request which had been made in the notice of appeal which referred to the appellant's letter of 3 February 2006 and to which the order for interlocutory revision was a response. It also follows from the terms of the separate order for rectification made under Rule 89 EPC 1973, which forms part of the factual matrix in the context of which the order under Article 109(1) EPC was made. Therefore, the interlocutory revision of 12 June 2006 made pursuant to Article 109 EPC 1973 can only be construed as embracing an order for the grant of the patent in the form of the corrected documents.

10. Any perceived inconsistency of the Examining Division issuing two decisions on the same day both concerning the same correction of the decision to grant cannot alter the procedural fact that two decisions were taken. The fact that one of the decisions may have been incorrect does not mean that that decision must be construed as having a different meaning and effect from that which, on an objective basis, it clearly had. From the appellant's point of view it cannot be said that one decision, in particular the decision under Article 109(1) EPC, was less valid than the other.

It follows that the Examining Division simultaneously issued (a) a decision pursuant to Rule 89 EPC 1973 (on Form 2051) and (b) an interlocutory revision decision pursuant to Article 109(1) EPC 1973 (on Form 2701), both decisions relating to the decision to grant dated 26 January 2006.

The pending status of the parent application

11. The question is then, what was the effect of these actions with respect to the issue of whether the (parent) application remained pending within the meaning of Rule 25(1) EPC 1973?

As regards the meaning of "pending application" in Rule 25(1) EPC 1973, one interpretation, which is not binding on the Boards of Appeal, is given in the Information from the European Patent Office dated 9 January 2002 (OJ EPO 2002, 112). There it is stated as follows:

"An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines for Examination in the European Patent Office, Chapter A-IV, 1.1.4)"

However, this official information contains only the statement that the cited procedural situations determine the end of the pendency of a European patent application but the statement does not state specific criteria which can be used to define the pendency/non-pendency of an application in other procedural situations, for example as in the present case where an appeal was filed against the decision to grant.

12. Article 106(1), second sentence EPC 1973 stipulates that an appeal shall have suspensive effect. The suspensive effect of a (timely filed) appeal which is referred to the Board of Appeal is generally construed so as to ensure that the contested decision does not take effect until the final decision is delivered by the Board of Appeal. "Although not changing the date of the contested decision, this [suspensive] effect prevents it from having any legal consequences. It further means that the earliest date at which the decision under appeal could have any such consequences (provided it was upheld) would be the date of a decision by a Board of Appeal." (T 01/92, OJ EPO 1993, 685, point 3.1 of the Reasons). If the result of an appeal against a decision to grant is that the appealed decision has no legal effect it would be strange if the application was not still pending during the appeal proceedings.

13. In the present case, the appeal was filed after the publication of the mention of the grant but within the two month time limit for filing an appeal according to Article 108, sentence 1 EPC 1973. Therefore, the question arises whether the "taking effect" of the decision to grant according to Article 97(3) EPC can override the suspensive effect of an appeal pursuant to Article 106, second sentence EPC 1973. It must be noted that the validity of the publication of the decision to grant pursuant to Article 97(3) EPC 1973 must depend on the validity of the decision to grant. If no effect ensues from the decision to grant because of the suspensive effect of the appeal the publication of the mention of the grant cannot have legal effect either, even if the appeal is filed after the publication. The present European Patent Office practice to publish the mention of the grant of a patent before the two month time limit for filing an appeal has expired is based on the fact that the grant of a patent must have been based on agreed documents but seems to involve the risk that the publication of the decision to grant will become retroactively invalid by reason of an appeal. In any event, however, this practice cannot be a legal basis for negating the suspensive effect of appeal stipulated for by Article 106(1), sentence 2 EPC 1973. Hence, in the present case the fact of the publication of the mention of grant on 8 March 2006 is not a valid reason for denying the pendency of the grant proceedings after the appeal was filed.

14. On the other hand, it cannot be said that the clear jurisprudence of the Boards of Appeal is that the suspensive effect of an appeal ensues in all circumstances and has, equally in all circumstances, the consequence that the grant proceedings remain pending in the sense of Rule 25 EPC 1973 during the appeal proceedings.

15. Admittedly, two decisions of the Boards of Appeal appear to say that this is indeed the case. In decision J 28/94 (OJ EPO 1995, 742, point 2.2 of the Reasons), the Board took the view that the appeal's suspensive effect meant the contested decision did not have legal effect before the date of the decision of the Board of Appeal. In decision J 3/04, dated 20 September 2005, it was said (point 5 of the Reasons) that the suspensive effect does not depend on the admissibility of the appeal or on the answer to the question whether an appellant is adversely affected according to Article 107, first sentence EPC 1973. On the basis of these views that the appealed decision does not take effect before the date of the decision of the Board of Appeal (or, implicitly, the date of an order made under Article 109(1) EPC), the grant proceedings and thereby the application must still be pending up to this latter date.

16. However, a (partly) different view was taken in the decision J 28/03 (OJ EPO 2005, 597), where the appeal was dismissed as inadmissible by the Board of Appeal.

It was stated that "in the intermediate period between the filing of an appeal and the final decision of the Board of Appeal the fate of the appealed decision is pending although the contested decision as such still exits" (point 12 of the Reasons). According to this decision the suspensive effect meant that actions which normally take place after a decision are "frozen" but does not have the effect of setting aside the contested decision to grant a patent. If the appeal is dismissed as inadmissible the appellant "is put back to the legal situation existing at the time of the grant of the patent as if no appeal had been filed" (point 17 of the Reasons). This view leads to the result that when an appeal is dismissed as inadmissible by the Board of Appeal, the grant proceedings are to be considered as not having been pending during the appeal proceedings.

17. In the present case the Receiving Section argued, with reference to decision J 12/85 (OJ EPO 1986, 155, point 3 of the Reasons), that the appeal against the decision to grant was inadmissible because the appellant was not adversely affected by the appealed decision. If the reasoning of decision J 28/03 is then additionally applied to the present case, it would mean that the grant proceedings were no longer pending during the appeal proceedings.

18. However, in the present case the controversial opinions on the effect of a timely filed but inadmissible appeal with respect to the pendency of an application have no bearing on the outcome of the present case since the fact that the Examining Division issued a revision decision under Article 109 EPC 1973 makes this legal question moot.

19. According to the established European Patent Office practice interlocutory revision under Article 109 EPC 1973 can either be such as to annul the decision (a "rein kassatorische Abhilfe", or purely "cassatory" act) or it can be a "reformatory" revision (see T 919/95, point 2 of the Reasons, and Singer/Stauder (Joos), EPC, 4th German ed., Art. 109 note 11). In both cases, and whether or not the cancellation of the appealed decision is expressly ordered, the appealed decision is set aside by the department of first instance, in the first case by a "cassatory" procedural act, e.g. by a communication providing for the further examination of the application or, in the second case, by a revision decision immediately revising the appealed decision. In the present case, by their decision of 12 June 2006 the Examining Division ordered an immediate "reformatory" revision.

20. Where a decision is taken on the allowability of an appeal, the present Board holds that an application is pending in terms of Rule 25 EPC 1973 at least up to the point in time when the decision is taken. There is no need for the Board to consider what the position is where an appeal has been rejected as inadmissible.

21. The Receiving Section stated under point 3 of the reasons of their decision that a decision to correct the decision to grant does not "re-open" the grant procedure and does not "re-open" the possibility to file a divisional application. However, in the present case this conclusion is only correct with regard to a decision to correct the grant decision pursuant to Rule 89 EPC 1983, since such a decision does not involve a substantive amendment to the decision. It was not correct with regard to a revision decision under Article 109 EPC 1973, which has the effect that the appealed decision is set aside.

22. The decision of the Examining Division under Article 109(1) EPC in the present parent application included findings that the appeal was both admissible and allowable. These findings were not only expressed by the words "the appeal is allowable and well-founded" but they were also an indispensable condition for the further decision to grant interlocutory revision: see Article 109(1) EPC and the decision of the Enlarged Board of Appeal, G 3/03 (OJ EPO 2005, 344, point 3.3. of the Reasons).

23. As such, a revision decision pursuant to Article 109 EPC 1973 opens up the possibility that the patentability of the claimed subject matter will be completely re-assessed, independently of whether or not the cancellation of the appealed decision is expressly ordered or the written reasons are restricted to a specific legal question. Such a decision cannot be limited to a single legal question or issue as e.g. the question whether or not a decision to grant can be corrected. This is the decisive difference from a decision under Rule 89 EPC 1973, which does not affect the date and legal existence of the decision to be corrected.

24. In the present case, the "reformatory" revision decision under Article 109 EPC 1973 was restricted to the correction of the decision to grant. However, the lack of any exhaustive statement in respect of the patentability of the subject matter did not limit the appeal proceedings to the allowed correction, because the decision to grant was replaced by the revision decision on 12 June 2006 and the grant proceedings were not terminated before this date.

In the Board's view, it seems to be obvious and self-evident that the grant proceedings having been terminated by the revision decision on 12 June 2006 were still pending up to this date of the revision decision.

25. As the present divisional application was filed after the appeal in the parent application had been filed and before the revision decision was taken by the Examining Division in the parent application, the parent application was pending at the filing date of the divisional application. Hence, the divisional application fulfilled the requirement pursuant to Rule 25(1) EPC 1973 that the earlier application No. 01113197 was pending at that date. Therefore, the appeal is allowable and the present application is to be treated as a divisional application to application No. 01113197.

26. The legal question referred to the Enlarged Board of Appeal in case J 02/08 concerns the status of a parent application after its refusal and until the expiry of the period for appeal, if no appeal is filed. The outcome of these proceedings cannot affect the foregoing reasoning and, therefore, a stay of the present proceedings was neither justified nor appropriate.