T 0001/92 (Approval - Disapproval) 27-04-1992

1. Admissibility

The Notice of Appeal, appeal fee and the Statement of grounds have all been submitted in due time under Article 108 EPC. For the purposes of Article 107 EPC, it has to be established whether or not the Appellants were adversely affected by the decision to grant the patent in question before the appeal can be declared admissible.

Under Article 107 EPC, any party to proceedings adversely affected by a decision may appeal. As the Appellants' requests that their approval be disregarded and that the time limit for response to the Rule 51(4) EPC communication be extended were filed within the four month period given in that communication, they were entitled, in accordance with Rule 51(5) EPC to make observations upon invitation by the Examining Division, should it not consent to the proposed amendments. This means that in any circumstance the Appellants were entitled to a response dealing with their requests. Under Rule 51(4) EPC, last sentence, they were further automatically entitled to the requested extension.

The request of 20 March 1991 to disregard the approval, being on time, made it impossible for the EPO to establish as required by Rule 51(6) EPC that the approval still was maintained unambiguously. As the subsequent decision to grant could not be said to correspond to an unambiguous request as required by the consistent case-law of the Boards of Appeal (cf. i.a. J 12/85, OJ EPO 1986, 155) the Appellants are adversely affected for the purposes of Article 107 EPC. The appeal is therefore admissible.

2. Allowability

Article 113(2) EPC provides that the EPO shall consider and decide upon the European patent application only in the text submitted to it, or agreed, by the applicant. The Communication of 2 April 1991 sets out a restriction not laid down in the Convention, namely that amendments are no longer possible after an approval under Rule 51(4) EPC has been given. If this were true, there would be only one possible interpretation of this Rule, i.e. that a given approval is irrevocable. Such an interpretation would seem consistent with the Guidelines, Part C, VI, 4.10, which indicate that an approval is binding.

However, no part of Rule 51 EPC or any other provision of the Convention attaches such a preclusive effect to the approval. As the Boards of Appeal are not bound by the Guidelines, but only by the Convention and its Implementing Regulations, the following considerations become relevant for the proper interpretation of the effect of an approval.

As already described in point 1, Rule 51(5) EPC expressly entitles the applicant to have a response from the Examining Division to a request for amendment, if this request is filed on time. As a result, no final decision may be taken until that time limit has expired, and only then if there is an unambiguous approval. Rule 51(6) EPC requires the Office to establish (i.e. find beyond doubt) that the applicant approves the text as intended for grant, before proceeding any further. Only if such an approval was the only submission on file at the expiration of the time limit provided by Rule 51(4) would the interpretation as given in the above Communication be correct.

The travaux préparatoires to the 1987 amendment of Rule 51 EPC, in effect as of 1 September 1987, Doc CA/26/87 -XXVI, make no mention either of such a preclusive effect of the approval. The main object was to separate the procedure for approval from the subsequent formal requirements (fees for grant etc.) in order to safeguard the rights of applicants, depending on their reaction to the text proposed for grant. This was a result of decision J 22/86, OJ EPO 1987, 280, invalidating the former practice with interlocutory revision upon appeal.

The 1987 amendments do not change the basic principle of procedure that the latest request filed within a stipulated time limit, whereby earlier requests are withdrawn, is the one validly expressing the position of the party in question. It follows from the above that an approval filed in response to a Rule 51(4) EPC communication is not absolutely binding and that a decision to grant thus cannot be issued, if, at the end of the time limit given in the communication, it cannot be established that the applicant still agrees unambiguously to the text intended for grant. The conditional phrase of the 20 March request to disregard the approval, "if that letter has not been received", could be interpreted to imply that the approval would still be valid if already received by the EPO. But, as already noted above, the decisive factor is that the text upon which the EPO proceeded to grant could not be said to have been unambiguously approved within the time limit provided under Rule 51(4) EPC. The indispensable basis as required by Article 113 EPC for a decision was thus not present.

Further, the request to have an extension under Rule 51(4) EPC should have been automatically granted. The decision to grant the patent must therefore be set aside.

3. Procedural violations

3.1 Publication in spite of the appeal

The Notice of Appeal was filed on 30 August 1991 and the appeal fee was credited as paid on 5 September 1991. From the latter date there was thus an appeal in existence, which necessitated a decision by a Board of Appeal, even if the decision would only have been to declare the appeal inadmissible. An appeal has suspensive effect (Article 106(1) EPC). Although not changing the date of the contested decision, this 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.

This should have led the EPO to stop the publication of the mention of the grant (cf. The Guidelines for the Examination in the EPO, E.XI.1, which presupposes that publication does not take place when an appeal has been filed). The reasons given according to the Appellants, that the preparations already were made and that in fact the manuscript had already been sent on 5 August 1991, are of secondary importance. Such practical considerations may not override the suspensive effect of the appeal, not even if the appeal should later be declared inadmissible.

By not observing this principle, the Examining Division committed a substantial procedural violation with wide- reaching effects. First and foremost the time period for oppositions is calculated from the mention of the grant as published in the European Patent Bulletin. As the date of a decision under appeal does not change, but only its effects are suspended, it is self-evident that no measures must be taken when an appeal has been filed, in particular no measures which could render the appeal useless. Secondly, the public, relying on the official information relating to the publication, could take steps to file oppositions. This would involve unnecessary oppositions at unnecessary costs, if the text later proved not to be valid. Significant economic losses could result, losses which might not necessarily be recoverable. The patent proprietor could also be forced to oppose the patent. In order to prevent such results, if possible, the Board decided to examine the appeal with priority.

The effects of the publication must be cancelled by a correcting notice in the European Patent Bulletin (cf. J 14/87, OJ EPO 1988, 295), to set off the starting date for the time period for opposition.

3.2 The 9 August request for resumption of proceedings The fact that the Appellants never were informed about whether or not the Examining Division would consider the request filed on 9 August 1991 constitutes a further procedural violation, having regard to Article 113(1) EPC. This is an issue separate from the substantive issue already dealt with in point 2 above, which related to Article 113(2) EPC. Indeed, with regard to Article 113(1) EPC, the Guidelines, Part C, VI, 4.11, correctly indicate the need for the Examination Division to send a communication to the applicant, if it expects to refuse a request for amendments.

3.3 Reimbursement

In view of the substantial procedural violations and the allowability of the appeal, reimbursement of the appeal fee is warranted for reasons of equity.

4. Further issues

4.1 The effect of approvals under Rule 51(4) EPC Reference is made in the Communication of 2 April 1991 to an enclosed copy of the Guidelines, Part C, VI, 4.10 where the incorrect interpretation regarding the binding nature of an approval under Rule 51(4) EPC, is expressed. In said paragraph of the Guidelines reference is in turn made to Part C, VI, 15.1 of these Guidelines, where i.a. the proper procedure upon requests for amendments is laid out. Nowhere in this part of the Guidelines is it stated that an approval precludes a subsequent request for amendment filed on time. As already observed in point 2, neither the Convention, nor its Implementing Regulations imposes such an effect. The Board would take this opportunity to remark that the Guidelines Part C, VI, 4.10 seem to need a qualifying amendment in order that all requests filed within the time period under a Rule 51(4) communication are duly taken into account by the Examining Division before proceeding under Rule 51(6) EPC. Preparatory measures prejudicial to the appeal may not be undertaken before lapse of the time period for response to the Rule 51(4) communication (i.e. four or six months as the case may be). Only after having made sure at the end of this period that the approval has been irrevocably made, as required by Rule 51(6) EPC, is the Examining Division free to proceed to grant.

4.2 The discretion under Rule 86(3) EPC Whether or not the Appellants should have their amendments considered is a matter of discretion under Rule 86(3) EPC. As the novelty question raised is one of substance, this discretion should be exercised by the Examining Division (cf. T 63/86, OJ EPO 1988, 224).

4.3 Remaining requests Given the above outcome of the appeal, none of the remaining requests by the Appellants - regarding the merits of the request of 9 August 1991, the extent of the obligation of the Examining Division to consider requests for late filed amendments, the justification for a resumption of the proceedings in view of the particular facts, or the request for oral proceedings - comes under consideration by the Board.