T 0115/82 (Pulp production) 01-03-1983
I. Parties' consent to the consolidation of appeal proceedings pursuant to Article 9(2) of the Rules of Procedure of the Boards of Appeal (Official Journal of the EPO 1983, pp. 7,9) is not required if the parties are the same, the facts are related with regard to their subject-matter and a possible interest for the parties in separate proceedings is not recognisable.
II. The decision of a Formalities Officer must be set aside if his power to decide cannot be inferred from Rule 9(3) EPC or from a transfer of powers based thereon. The case must be remitted to the department referred to in Article 15 EPC, whose competence is derived from the Convention (in connection with J 10/82 dated 21 December 1982, Official Journal of the EPO 1983, p. 94).
Consolidation of proceedings
Formalities Officer - competence
I. In 1981 the appellant/proprietor of the patent was granted European patents bearing the publication numbers 4928 (Application No. 79 101 048.6) (Title: "Dispersion for use in pulp production using this dispersion", hereinafter referred to as "pulp production") and 4938 (Application No. 79 101 110.9) (Title: Process for the preparation of semi-synthetic beta-lactam antibiotics, hereinafter "antibiotics") respectively.
II. In filing a notice of opposition, which according to the title of the invention and the content of the Statement of Grounds of the opposition was intended to be directed against the "pulp-production" patent, the opponent gave the publication number of the contested patent as 4938 and, after expiry of the opposition period, requested correction to 4928.
III. In the subsequent course of the procedure, the Formalities Section of the Opposition Divisions of the EPO - in response to requests from the patent proprietor - took two decisions concerning the above-mentioned patents. In a decision dated 13 May 1982 concerning the "pulp production" patent (number wrongly given as "4938" - correct number: "4928") the opposition was found admissible. In a decision dated 2 July 1982 concerning the "antibiotics" patent (No. 4938), the institution of opposition proceedings against this patent was refused.
IV. The separate appeals by the patent proprietor in appeal cases T 114/82 and T 115/82 are directed against these decisions. For the further content of the files (especially the reasons for the decisions appealed, the notices of appeal and the statements of the grounds of appeal), reference is made to the files, as the decision to be taken by the Board of Appeal is not dependent on them.
1. The appeals comply with Articles 106 to 108 and Rule 64 EPC. In the case of the "antibiotics" appeal the same applies with regard to the requirement concerning the admissibility of the grievance (Article 107, first sentence, in conjunction with Rule 65(1) EPC). The grievance does not lie in the fact that the appellant/patent proprietor was refused the institution of opposition proceedings against its own patent but simply in the fact that a decision by the department of the first instance not corresponding to the appellant's request was issued. Consequently, the patent proprietor is "adversely affected" within the meaning of Article 107, first sentence, EPC by the decision appealed in the "antibiotics" case as well. Both appeals are, therefore, admissible.
2. According to Article 9(2) of the Rules of Procedure of the Boards of Appeal (Official Journal of the EPO, 1980, p. 171 - see also OJ 1/1983, p.7 et seq.), the appeals can be dealt with in consolidated proceedings. In this instance the consent of the parties provided for therein is not required. Article 9(1) of the said Rules of Procedure refers primarily to appeals involving similar points of law filed by different parties. In the appeals in suit the parties are the same. The facts on which the decisions are based are closely related with regard to their subject-matter. Furthermore, the parties have no recognisable interest whatever in separate proceedings. In fact, the case in question is analogous to Article 9(1) of the said Rules.
3. Oral proceedings which were requested by the appellant in the event of a decision not being taken on his submissions are not necessary. A decision will be made as requested on the setting-aside of the decisions of the department of first instance. There is, moreover, no "ratio-decidendi" within the meaning of Article 111(2) EPC by which the Opposition Division might be bound in the further proceedings.
4. The "pulp production" decision is a decision within the meaning of Article 106(3) EPC, finding an opposition in the first place to be admissible. According to the "Notice of the Vice-President of Directorate General 2 of the EPO concerning the entrustment to formalities officers of the execution of individual duties falling to the Opposition Divisions of the EPO, dated 8 January 1982" (Official Journal of the EPO 1982, p.61) a Formalities Officer is not empowered to take such a decision. The power given therein under point 6 to decide "in ex parte proceedings on the inadmissiblity of the opposition ... with the exception of the cases provided for in Rule 55(c) EPC", entitles the Formalities Officer to "reject the notice of opposition as inadmissible" within the meaning of Rule 56 EPC only and not to take a decision under Article 106(3) EPC, finding an opposition in the first place to be admissible. This may readily be seen from the aforementioned point 6, which refers to "ex parte" proceedings, of which there is no question when talking of the admissibility of an opposition.
5. Under these circumstances, the decision appealed must be set aside and the case remitted in accordance with Article 111(1) EPC to the department competent under the Convention. According to Article 19(1) EPC, this is the Opposition Division to which responsibility is given under the business distribution scheme (in this connection see also J 10/82 dated 21 December 1982, Official Journal of the EPO 1983, p. 94).
6. The same applies mutatis mutandis to the "antibiotics" decision. As already mentioned (1. above), the appeal is also admissible in this instance - although the situation is a curious one in that it is the patent proprietor which is endeavouring to have opposition proceedings instituted against its patent. It would seem that in this case the patent proprietor wanted to adopt a logical and consistent position with regard to the "pulp production" case. However, a declaration by the patent proprietor that it regards the notice of opposition as filed against the "antibiotics" patent and that it is prepared to have opposition proceedings instituted on that basis should suffice there. It should also be borne in mind that the question of the admissibility or inadmissibility of the opposition is not necessarily identical in both cases: declaring the "pulp production" opposition to be inadmissible does not automatically mean that the "antibiotics" case is admissible. In the latter case, there may be doubt as to whether a statement of grounds directed entirely at "pulp production" can make an opposition to the "antibiotics" patent admissible.
7. In accordance with the decision of the Legal Board of Appeal mentioned under 5. above, the reimbursement of the appeal fee pursuant to Rule 67 EPC must be ordered in both cases. The equity of such an order derives from the procedural error (i.e. the first instance was not competent to decide) and the consequent necessity of remitting the case to the competent department.
For these reasons, it is decided that:
1. Appeal cases T 114/82 and T 115/82 are hereby consolidated.
2. The decisions of the Formalities Section of the of the Opposition Division of the European Patent Office dated 13 May 1982 concerning the European patent bearing the publicaiton number 4928 and 2 June 1982 concerning the European patent bearing the publication number 4938 respectively, are set aside and the cases remitted to the competent Opposition Division for prosecution of the procedure.
3. Reimbursement of the appeal fees is ordered.