2.2. No jurisdiction of the Boards of Appeal

In J 22/10 the Legal Board stated that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (extension agreements) were based not on the EPC itself but solely on the co-operation agreements between the European Patent Organisation and the extension states; it therefore rejected the respective appeals as inadmissible (see J 14/00, OJ 2002, 432; J 19/00; J 9/04 of 1 March 2005; J 2/05; J 4/05). Any decisions based on such international treaties did not fall within the scope of the EPC and, as a result of this, were not subject to the jurisdiction of the boards of appeal. The extension agreements made it absolutely clear that references to provisions of the EPC were exhaustive and, thus, that there could be no corresponding application of other provisions, including those of Art. 106 EPC concerning the appeals procedure. In other words, the Legal Board was not competent to decide a case that was governed solely by a "foreign" legal system.

In J 14/00 (OJ 2002, 432) the Legal Board decided on the admissibility of an appeal directed against a letter issued by an EPO formalities officer in application of the EPC 1973 in relation to the Extension Ordinance (OJ 1994, 75) associated with the Extension Agreement with the Republic of Slovenia. It held that, according to the exhaustive provision in Art. 106(1) EPC 1973, only those decisions of the EPO could be contested which were taken, within the framework of their duties under the EPC 1973, by the departments listed therein. This was not the case for decisions taken by the EPO when carrying out its obligations under the Extension Agreement. The Legal Board found that there was no basis in the structure or legal nature of the Extension Ordinance for the appealability of a letter issued by an EPO formalities officer. The board held that the extension procedure generated legal effects exclusively on the basis of Slovenian national law. The Extension Ordinance thus made it absolutely clear that its references to provisions of the EPC 1973 were exhaustive and that there was no question of any corresponding application of other provisions, including those of Art. 106 EPC 1973 on the appeals procedure.

As to the role of the national jurisdictions, see also J 9/04 in this chapter, VII.2.1. (previous section).