T 0591/05 (Admissibility of appeal/WEA) 11-05-2006

1. Request for enlarging the composition of the Board pursuant to Article 21(3)(b) EPC

The appellant has requested that, in view of the legal issues to be decided in the present appeal and involving in particular the admissibility of the appeal, the Board should be enlarged with two legal members. According to Article 21(3)(a) EPC, for appeals from a decision of the examining division a Board of Appeal shall consist of "two technically qualified members and one legally qualified member, when the decision concerns [...] the grant of a European patent and was taken by an Examining Division consisting of less than four members", and according to Article 21(3)(b) EPC the Board shall consist of "three technically qualified members and two legally qualified members when the decision was taken by an Examining Division consisting of four members or when the Board of Appeal considers that the nature of the appeal so requires".

However, the decision under appeal was taken by an examining division consisting of three members. In addition, as regards the nature of the appeal, the present Board has not been confronted, either during the written appeal proceedings or during the oral proceedings at the end of which the Board gave its decision, with any special circumstance or any particular legal or factual issue that would have justified in the present case enlarging the composition of the Board. Accordingly, the present Board in its original composition pursuant to Article 21(3)(a) EPC considered that it was neither necessary nor appropriate to enlarge its composition under Article 21(3) (b) EPC as requested by the appellant and consequently decided to reject the appellant's request in this respect.

2. Admissibility of the appeal

2.1 According to Article 107 EPC, any party to proceedings (in the present case the then applicant) "adversely affected by a decision" may appeal, and according to Rule 65(1) EPC compliance with Article 107 EPC is a prerequisite for an appeal to be considered as admissible. The question therefore arises whether the appeal lodged by the appellant against the decision of the examining division to grant the patent is admissible under Rule 65(1) EPC, and in particular whether the appellant was "adversely affected" by the decision to grant within the meaning of Article 107 EPC.

2.2 The decision to grant a patent was issued by the first-instance department in accordance with the requirements of Article 97(2) EPC and the provisions set forth in Rule 54 EPC, and after the appellant expressly approved and intentionally complied with all the procedural steps leading to the grant of the patent (point I above). Thus, it is clear from the facts and not even disputed by the appellant (point V above) that the procedure leading to the grant of the patent was consistent with the grant procedure prescribed by the EPC and, in addition, was based on the application documents amended according to the then valid and unambiguous request of the appellant. In these circumstances, the decision under appeal was fully consistent with the request of the appellant at that time - or, using the more precise formulation of the French text of Article 107 EPC, the decision "a fait droit aux prétensions" of the appellant - and the Board is unable to see in what respect the appellant could have been adversely affected by the decision to grant (see decisions J 12/83 (OJ EPO 1985, 6), point 3 of the reasons, J 12/85 (OJ EPO 1986, 155), points 3 to 6, J 28/03 (OJ EPO 2005, 597), point 11, and T 953/96, points 1 and 2).

2.3 A first line of argument developed by the appellant in support of the admissibility of the appeal is that he was subsequently adversely affected by the decision to grant on the grounds that a prior art disclosure (document A1) found during parallel national proceedings and not considered during the examination proceedings before the EPO might be pertinent in possible opposition or national revocation proceedings. It cannot be denied that the situation faced by the appellant in such circumstances can be qualified as subjectively adverse. Nonetheless, irrespectively of the degree of relevance of the disclosure of the document, the Board can at the most conclude from these facts that the appellant may possibly be adversely affected by the disclosure of the document in possible subsequent post-grant proceedings, not however that he was actually and objectively adversely affected by the decision to grant within the meaning of Article 107 EPC because by granting the patent the first-instance department fully acceded to the then valid request of the appellant.

The further contention of the appellant that the decision to grant adversely affected him "in restricting the scope of amendment subsequently available to him" to give account of the disclosure of document A1 cannot be followed either. An applicant has the legitimate interest of having a patent being granted and, once a patent has been granted with the explicit and express approval of the applicant, he is presumed to be aware of, and to cope with the consequences of having the patent granted such as the substantial restrictions imposed by the EPC to the scope of amendments of a granted patent during possible post-grant proceedings (Articles 123(3) and 138(2) and Rule 57a EPC). Accordingly, the restrictions to the scope of amendments available to a patent proprietor in possible post-grant proceedings cannot be subsequently invoked in support of the contention that the patent proprietor was, in retrospect, adversely affected by the decision to grant. As regards the existence of a potentially pertinent prior art document found by the appellant after the grant of the patent, this may be legitimately invoked in support of the need for a post-grant procedure enabling a patent proprietor to give account of new facts - as has been actually done (see for instance decision G 9/93, OJ EPO 1994, 891, point 4.1 of the reasons) and followed by the legislator who introduced new Article 105a in the revision of the EPC 2000 (OJ EPO 2001, Special edition No. 4, page 97) that has not yet entered into force - but, in the absence of any appropriate legal provision in the EPC and as already concluded in the former paragraph, cannot be invoked in support of the admissibility of the appeal, let alone in support of the appellant's wish that the appeal be tacitly deemed to be admissible under Rule 65(1) EPC in order to give the Board the possibility of considering reopening the examination proceedings for a reassessment of the case to protect the appellant from possible adverse effects that may arise from the existence of document A1.

2.4 According to a second line of argument of the appellant, the filing of a divisional application was already announced during the examination proceedings but - due to circumstances that are not relevant to the present appeal - the divisional application was only filed after the relevant date of the decision under appeal with the consequence that the appellant would be adversely affected if the filing date of the application in suit could not be accorded to the divisional application pursuant to Rule 25 EPC.

It is however noted that the declaration made by the appellant during the examination procedure that he reserved the right to file divisional applications expressed at the most an intention at that time and did not create any obligation on the part of the examining division in charge of the examination of the application to check the status of any possible divisional application based on the application in suit, still less to possibly postpone the grant of the patent in order to elucidate the outcome of the appellant's intentions regarding possible divisional applications. Thus, once the appellant gave during the grant procedure his approval to the text for grant, the general principles of due process and good faith were fully complied with by the examining division when it proceeded to grant the patent since as stated in decision T 824/00 (OJ EPO 2004, 5, point 6 of the reasons) "a competent first instance department of the EPO is empowered under Article 113(2) EPC to take a decision which terminates the first instance procedure on the basis of the ostensible final requests of the parties as determined by the department concerned with due care and diligence having regard to what has been duly submitted by the parties" [emphasis added by the Board]. Thus, the formulation of the requests during the grant procedure and the approval of the application documents proposed for grant were the sole responsibility of the appellant (T 953/96, supra, point 3 of the reasons) and it was incumbent upon the appellant, and not upon the examining division or upon the EPO, to undertake the appropriate measures to ensure that any possible divisional application was being filed in due time before the grant procedure was closed.

In addition, while the status of the application on which the patent was granted - or, for the present purposes, the outcome of the present appeal - may be crucial for the legal status of the divisional application, the Board cannot see in what respect the divisional application may have any bearing on the admissibility of the present appeal. In particular, any allegation relating to the circumstances under which the divisional application was filed might well be pertinent to the legal status of the divisional application, but is irrelevant to the issue of the admissibility of the present appeal under Article 107 EPC.

In view of the above, neither the fact that the appellant announced his intention to file a divisional application nor the filing and the status of the divisional application constitute a sufficient reason to conclude that the appellant was adversely affected by the decision to grant within the meaning of Article 107 EPC (see decision T 549/93, points 3 and 6 of the reasons).

The further contention of the appellant that the requirement under Article 107 EPC should not be interpreted so strictly as to put the appellant in a worse situation than he would be in accordance with other provisions such as those set forth in Article 122 EPC does not persuade the Board either. The requirement of Article 107 EPC cannot be purposively construed to meet the particular circumstances of the present appeal by citing special provisions of the EPC that have no bearing on the admissibility of the appeal itself. In addition, there is no legal provision or general principle in support of the contention of the appellant that different legal provisions - and in particular those of Articles 107 and 122 and Rule 25 EPC - should be interpreted so as to put a party to proceedings in procedurally comparable situations. On the contrary, Article 122 EPC itself expressly specifies exceptions to the extent of applicability of its provisions (see Article 122(5) EPC) and is therefore explicitly at variance with the contention of the appellant in this respect (see also T 824/00, supra, point 6 of the reasons).

Finally, the submissions of the appellant that in the United Kingdom the grant of a patent can be "rescinded" so as to permit the applicant to file a divisional application based upon the corresponding application rely, as acknowledged by the appellant himself and shown in the decision of the Patent Court of the High Court of Justice of the United Kingdom cited by the appellant, on legal provisions and rules that have no counterpart in the EPC. These submissions are therefore irrelevant to the admissibility of the present appeal.

2.5 The appellant has also submitted that the fact that the EPO has requested payment of the ninth year renewal fee and the fact that the national offices have returned to the appellant the renewal fees would indicate that officially the application is still pending. However, these facts merely reflect the suspensive effect that the present appeal against the entirety of the decision to grant has pursuant to Article 106(1) EPC on the payment of renewal fees under Articles 86(4) and 141(2) EPC, the suspensive effect persisting until the end of the present appeal proceedings (J 28/94 (OJ EPO 1995, 742), point 2.2 of the reasons and J 28/03, supra, points 12 to 14 and 18). Thus, the facts alleged by the appellant merely reveal the pending status of the present appeal against the decision to grant, not that the application itself is still pending independently of the present appeal since that would require setting aside of the decision under appeal what in turn would presuppose the existence of an admissible appeal.

Accordingly, the suspensive effect of the present appeal is a direct consequence of, and is subordinate to the appeal itself (Article 106(1) EPC) and, consequently, no circumstance directly arising from the suspensive effect of the appeal can be invoked in support of the admissibility of the appeal itself.

2.6 In view of the above, and in the absence of evidence that the circumstances during, and relating to the first-instance examination proceedings were such that the appellant was adversely affected by the decision under appeal within the meaning of Article 107 EPC, the Board concluded during the oral proceedings that the appeal had to be rejected as inadmissible in accordance with Rule 65(1) EPC.

3. In the absence of an admissible appeal, the Board has no competence to consider the allowability of the appeal (Article 110(1) EPC) and in particular the allowability of the requests of the appellant to set aside of the decision and to remit the case to the examining division for further prosecution. In addition, the fate of the divisional application referred to by the appellant is immaterial to, and beyond the legal framework of the present appeal (T 549/93, supra, point 6 of the reasons).