BOARDS OF APPEAL
Decisions of the Legal Board of Appeal
Decision of the Legal Board of Appeal dated 17 September 1992 - J 17/91 - 3.1.1*
Composition of the Board:
Applicant: Albert Cohen
Headword: Registering of licence/COHEN
Article: 97(4) EPC
Keyword: "Registering of exclusive licence on granted patent"
An exclusive licence on a granted patent can no longer be recorded in the Register of European Patents once all legal remedies are exhausted.
Summary of Facts and Submissions
I. European patent application No. 83 402 305.3 was filed on 30 November 1983.
II. Mention of grant of the European patent was published in the European Patent Bulletin on 26 April 1989.
III. On 27 January 1990 (no oppositions having been filed) the patent was definitively granted.
IV. By letter of 7 December 1990, its proprietor requested that a transaction entered into on 8 November 1990 (the granting of an exclusive licence on his patent application) be recorded in the Register of European Patents.
V. By reasoned decision of 15 February 1991, the Legal Division refused this request on the grounds that:
- a licence could only be recorded in respect of a European patent application, and in the present case the request dated 7 December 1990 related to a patent on which the grant decision under Article 97(4) EPC had been taken on 26 April 1989;
- the EPC made no provision for recording a licence on a European patent (Rule 61 EPC only covered transfers of European patents);
- even if said rule applied by analogy (which was excluded by Rules 20(1) and (2), 21(1) and 61 EPC interpreted together), all proceedings before the European Patent Office had ended on 27 January 1990 when the opposition period expired, so the request dated 7 December 1990 was in any case out of time.
VI. On 8 March 1991, the appellant appealed against this decision, paying the appeal fee on the same day.
The grounds for appeal are dated 9 April 1991, but do not bear an EPO stamp establishing the date of their receipt.
VII. In support of his appeal, the patent proprietor argues that:
- Articles 71 to 73 EPC provide for the owner of patent application to transfer and license his rights over the application;
- under Rules 20(1) and 22(1) EPC, such transfers and licences are recorded in the Register of European Patents;
- a European patent too can be assigned during opposition proceedings or the opposition period;
- Rule 92(1)(w) EPC requires the Register of European Patents to show inter alia any rights (and transfers of such rights) over a European patent application or European patent;
- nothing in the EPC expressly proscribes such entries if requested after proceedings before the EPO are terminated.
He requests registration of the exclusive licence granted in respect of the patent in question.
Reasons for the Decision
2. Under Article 73 EPC, a European patent application may be licensed for the whole or part of the territories of the designated Contracting States.
Rule 21 EPC, which explicitly refers to Rule 20(1) and (2) EPC, authorises registration in the Register of European Patents of the grant or transfer of such licences - if required, with an indication that they are exclusive (Rule 22 EPC).
Under Rule 20(2) EPC, the request - whether for registration or transfer of a licence on a patent application - is not deemed to have been filed until the administrative fee has been paid.
2.1 In the present case, the fee was not paid until 7 December 1990, at the same time as the request for registration of an exclusive licence on patent application No. 83 402 305.3 was filed.
By that date, however, not only had mention of grant of the European patent already been published in the European Patent Bulletin, but also the opposition period had expired (on 27 January 1990).
3. Even supposing that Rule 61 EPC could apply by analogy to registrations or transfers of exclusive licences on patents too, the Board notes that all proceedings before the European Patent Office had terminated before the request was filed.
3.1 Nor is the appellant correct in asserting that nothing in the EPC makes provision for such termination of proceedings before the EPO, since clearly once the patent is definitively granted the request for grant ceases to have any legal basis - for which reason alone jurisdiction passes from the EPO to the Contracting State national Offices designated in the request for grant.
4. The appeal must therefore be dismissed.
For these reasons it is decided that:
The appeal is dismissed.
* This is an abridged version of the decision. A copy of the full text in the language of proceedings may be obtained from the EPO Information Desk in Munich on payment of a photocopying fee of DEM 1.30 per page.