J 0012/83 (Inadmissible appeal) 09-11-1984

I. On 11 June 1981, the appellant filed a European patent application under No. 81104560.8, claiming priority from a Japanese national patent application made on 13 June 1980. Ten Contracting States, including Ausria, were designated in the European patent application. All claims of the application as filed were directed to compositions for treating diseases in circulatory organs. The title of the application also indicated that it related to such compositions.

II. Under Article 167 (2) EPC, Austria has reserved the right to provide in its national law that European patents, in so far as they confer protection on pharmaceutical products as such, shall in accordance with the provisions applicable to national patents, be ineffective or revocable.

III. The European search report was sent to the appellant's representative in January 1982 and the request for examination was filed on 16 April 1982. On 19 December 1982, an Examiner acting for the Examining Division consulted the appellant's representative by telephone concerning minor amendments to Claim 1, which were agreed.

IV. Thereafter, on 16 February 1983, advance notice of intention to grant a European patent was issued and the appellant was given a period of two months within which to submit any desired amendments. None was submitted. Then, on 13 May 1983, the Examining Division issued a Communication under Rule 51 (4) and (5) EPC indicating that it was intended to grant the patent in the text previously submitted, subject to the agreed amendments to Claim 1.

V. On 12 August 1983, the appellant's representative responded to the Communication under Rule 51(4) and (5) EPC by filing translations of the accepted claims and paying the grant and printing fees. On 19 September 1983, the appellant's representative requested correction of an obvious error in the description, a correction which was subsequently made by the printer.

VI. On 29 September 1983, the Formalities Officer acting for Directorate General 2 of the EPO issued the decision to grant the patent, which would take effect from 23 November 1983, pursuant to Article 97(4) EPC.

VII. On 11 November 1983, the appellant filed the present appeal against the decision to grant the patent, requesting that the decision be rectified or that the decision be revoked and the grant of the patent be allowed with the separate set of process claims for Austria which was enclosed with the Notice of Appeal. The Notice of Appeal incorporated a Statement of Grounds of the appeal. The appeal fee was duly paid.

VIII. At the appellant's request, oral proceedings were appointed for 30 May 1984. In a Communication before Oral Proceedings, the Legal Board of Appeal drew attention to

(1) the difficulty of accepting that, in the legal sense, the appellant was adversely affected by the decision under appeal, which was necessary if the appeal were to be held admissible and

(2) the difficulty in allowing the appeal, having regard to the true effect of Article 167 (2) EPC, if the appeal were admissible.

IX. In the course of the oral proceedings, the appellant's representative submitted inter alia that it was the practice of at least some Examining Divisions of the EPO to draw the attention of applicants to any lack of process claims in pharmaceutical patent applications for which Austria was a designated State and to transform product claims into process claims. It was submitted that the appellants had not been given equal treatment with other applicants. The Board decided that it was necessary to investigate EPO office practice in this matter and that, in the special circumstances, the proceedings should be continued in writing unless the representative asked for a further hearing.

X. After the hearing, the appellant was notified in writing by the Board that investigation had shown that there was no established practice of EPO Examining Divisions whereby product claims for pharmaceutical compositions were automatically transformed into process-claims for Austria.

XI. By letter dated 27 August 1984, the appellant's representative drew attenti on to a specific case, not previously drawn to the Board's attention, in which an Examiner had reminded an applicant that Austria had made a reservation under Article 167 (2) EPC. The representative further argued that the appellant was adversely affected by the decision to grant the patent since no valid claims for Austria were granted with the patent. The request that a patent be granted for Austria had never been renounced and it was self-evident that the appellant had the intention of obtaining a valid and enforceable patent for Austria. The representative also contended that the patent had been granted on the basis of a text to which the appellant had not declared its approval. Further, if it was considered that the payment of the granting fee was tacit consent, it should be possible to rescind the decision given as there was error in the giving of con sent which contradicted the original request for grant. Rescission or supplementing of the decision under appeal was requested.

XII. In a letter dated 5 November 1984 the appellant's representative mentioned another specific case in which an applicant's attention had been drawn to the fact that Austria had made a reservation under Article 167 (2) EPC.