T 0631/94 (Moulding machine) 28-03-1995
Intervention of the assumed infringer - inadmissible
Beitritt des vermeintlichen Patentverletzers - unzulässig
I. On 20 June 1994 the opposition division's formalities officer handed a decision to terminate opposition proceedings over to the EPO postal service for notification to the parties.
II. The decision was date-stamped 23 June 1994 and was despatched to the parties the same day by registered letter with advice of delivery.
III. On 23 June 1994 the appellants filed a reasoned notice of intervention and, "in case the opposition proceedings are to be terminated by decision, but said decision is not yet final", lodged an appeal against such decision, at the same time paying all the appropriate fees.
IV. After the opposition division had passed the file on to the EPO board of appeal without making any observations, the appropriate board registry informed the appellants that, according to Enlarged Board of Appeal case law (G 4/91, OJ EPO 1993, 707, and G 12/91, OJ EPO 1994, 285), the proceedings before the opposition division had been completed prior to receipt of the notice of intervention. Since the only party to the proceedings (the patent proprietor) had not filed an appeal, neither the notice of intervention nor the appeal had any legal effect.
V. Following this communication, the appellants upheld their view that the notice of intervention had been submitted in due time and argued that, notwithstanding the fact that the decision-making process had been completed on 20 June 1994 and hence prior to the date on which the notice of intervention was filed, the decision was not issued until the date of despatch, that is to say 23 June 1994.
Furthermore, the entries in the Register of European Patents and the EPIDOS Information Register - "Einstellung des Einspruchsverfahrens/Termination of Opposition Procedure/Clôture de la procédure d'opposition" and "Opposition proceedings closed (R.60) dispatch/legal effect day" - both bore the date 23 June 1994. This official date was the only date made known to the public and hence also to the intervener in this connection and therefore had to be deemed valid. For this reason the notice of intervention and the appeal filed on 23 June 1994 had been submitted in due time.
VI. During the oral proceedings requested by the appellants, the latter based their arguments essentially on their written submissions. They argued in particular that, according to decision G 12/91, the moment when the decision was handed over by the EPO formalities section was equivalent to the closing of the debate in oral proceedings, and the pronouncement of the decision in oral proceedings was equivalent to notification of the decision in written proceedings. A decision was issued the moment it was pronounced or posted for notification purposes, in this case, therefore, on 23 June 1994.
The notice of intervention had therefore been filed in due time and had legal effect.
VII. The respondents contended that the opposition division's decision-making process had been completed on 20 June 1994, the notice of intervention therefore had no legal effect and the appeal was inadmissible.
VIII. At the close of the oral proceedings the appellants requested that the decision dated 23 June 1994 be set aside and the matter referred back to the opposition division for further processing (main request) and, subsidiarily, that the following point of law be referred to the Enlarged Board of Appeal:
"Has a decision taken in written proceedings already been issued when it is handed over by the decision-making department's formalities section to the EPO postal service for notification, usually three days prior to the date it bears?"
The respondents requested that the appeal be dismissed and the appellants be ordered to pay the costs of the oral proceedings.
IX. After closing the debate the chairman of the board informed the parties that the decision would be issued in writing.
1. The appeal was filed against a decision against which an appeal lies. The appeal fee was paid in due time and the statement of grounds of appeal was filed within the time limits stipulated in Article 108 EPC. Furthermore, the notice of appeal contains a statement identifying the decision which is impugned and the extent to which amendment or cancellation of the decision is requested.
2. The requirements of Articles 106 and 108 and Rule 64(b) EPC are therefore met, but the appeal can be deemed admissible only if the requirements of Article 107 EPC are also met.
3. Under Article 107 EPC "any party to proceedings ... may appeal".
4. Under Article 105(1) EPC the assumed infringer may intervene in the opposition proceedings after the opposition period has expired. In decision G 4/91 the Enlarged Board of Appeal took that article to mean that intervention by the assumed infringer pursuant to Article 105 EPC presupposes that there are opposition proceedings inexistence at the point in time when a notice of intervention is filed.
5. In the present case the contested decision, bearing the date 23 June 1994 washanded over on 20 June 1994 by the opposition division formalities officer to the EPO postal service. On the date stamped, viz. 23 June 1994, it was posted by registered letter with advice of delivery for notification to the patent proprietor and the opponents.
On the same date, the appellants filed the notice of intervention, at the same time paying the opposition fee.
6. The question as to whether opposition proceedings were still in existence on 23 June 1994 is therefore of particular importance for the board's decision:
If they were still in existence, the notice of intervention would have been filed in due time and the appeal would be admissible because the intervener would be party to the proceedings as an opponent (Article 105(2) EPC). Otherwise, the notice of intervention would have been filed late and therefore have no legal effect, in which case the appeal would have to be rejected as inadmissible on the ground that it had not been filed by a party to the proceedings.
7. Point 9.3 of Enlarged Board of Appeal decision G 12/91 states:
"When a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it. This moment marks the completion of proceedings before the decision-making department."
8. Point 7 (second and third paragraphs) of G 4/91 also states that the proceedings are terminated at the point in time when the opposition division has made a final decision in the sense that thereafter it has no power to change it.
9. The contested decision was handed over to the EPO postal service on 20 June 1994, as shown by the entry to this effect on the copy of the decision in the file, thus terminating the decision-making process in this case.
In oral proceedings a decision becomes public and effective by virtue of being pronounced and has therefore been issued. It cannot be amended by the departmentthat issued it. The equivalent of this moment in written proceedings is the moment the decision is notified (G 12/91, point 2). However, the same situation already exists once the decision has been handed over to the EPO postal service. From that moment the content of the decision is public and effective, eg through inspection of the file.
According to the criteria set forth by the Enlarged Board of Appeal, therefore, the decision was issued with effect from 20 June 1994 and, since no appeal was filed by the parties to the proceedings, the opposition proceedings were also completed as of that date.
10. Since, therefore, the appellants' notice of intervention had no legal effect, the appeal is likewise inadmissible.
11. As the above statements show, the principles deduced from decision G 4/91 clearly apply to the present case and there is therefore no reason to refer the appellants' question to the Enlarged Board of Appeal.
12. The respondents requested a decision regarding the apportionment of costs. The board does not find that the appellants have abused or exceeded their legitimate rights, thereby arbitrarily causing the respondents to incur costs which, in all fairness, ought to be reimbursed.
The request for reimbursement of the respondents' oral proceedings costs is therefore refused.
For these reasons it is decided that:
1. The appeal is dismissed.
2. The request to refer a point of law to the Enlarged Board of Appeal is refused.
3. The request to order the appellants to pay the respondents' oral proceedings costs is refused.