BOARDS OF APPEAL
Decisions of the Legal Board of Appeal
Interlocutory decision of the Legal Board of Appeal dated 7 December 1994 - J 28/94 - 3.1.1
Composition of the board:
R. E. Teschemacher
Applicant: Soludia S.A.
Appellant: Renacare Limited
Headword: Suspensive effect/SOLUDIA S.A.
Article: 106(1) EPC
Rule: 13(1) EPC
Keyword: "Suspensive effect of an appeal" - "Correction to be published in the European Patent Bulletin"
The suspensive effect of an appeal deprives the contested decision of all legal effect until the appeal is decided. Otherwise the appeal would be deprived of any purpose.
Thus, in the event of appeal against a decision refusing to suspend publication of the mention of grant of a patent, publication must be deferred pending the outcome of the appeal.
If - as in the present case - suspension of publication proves impossible for practical reasons, the EPO must take appropriate steps to inform the public that the mention of grant was not valid.
Summary of facts and submissions
I. European patent application No. 91 402 380.9 was filed with the European Patent Office on 5 September 1991 by Soludia S.A. (France). On 21 October 1994, the examining division's decision to grant a European patent under Article 97(2) EPC was sent to the EPO post room, which despatched it to the applicant on 27 October 1994. This decision indicated that the mention of grant would be published in European Patent Bulletin No. 94/49 dated 7 December 1994.
II. By fax dated 27 October 1994 and received the same day at the EPO, a third party - the British firm Renacare Limited - asked the EPO to suspend the grant proceedings under Rule 13(1) EPC, and provided the EPO with proof that it had opened proceedings against the applicant for the purpose of seeking a judgment that Renacare was entitled to the grant of the European patent.
III. By decision of 25 November 1994, the EPO's legal division rejected the request for suspension of the proceedings.
IV. On 28 November 1994, the appellant (Renacare Limited) filed notice of appeal and paid the relevant fee. The statement of grounds was received the same day.
V. Also on the same day, under Article 109(2) EPC, the legal division referred the appeal to the board of appeal.
VI. The appellant's main request was that the decision of 25 November 1994 be set aside and the grant proceedings suspended under Rule 13(1) EPC. Its auxiliary request was that the examining division's decision of 27 October 1994 be set aside. In either case it also requested refund of the appeal fee.
Reasons for the decision
1. The appeal is admissible.
2.1 Notice of appeal was filed on 28 November 1994, and with effect from that date fulfilled the conditions laid down in Articles 106 to 108 and Rule 64 EPC. It was thus established - as the legal division pointed out in the interlocutory revision proceedings - that the appeal would be referred to the Legal Board of Appeal for decision.
2.2 An appeal has suspensive effect (Article 106(1) EPC). This cannot change the date of the contested decision, but does prevent it from having legal effects. It also means that a decision under appeal cannot begin to have such effects until the board of appeal has given its decision.
2.3 In view of the foregoing, the EPO should have either prevented publication of the mention of grant (see T 1/92, OJ EPO 1993, 685, Reasons 3.1) or taken the necessary steps to publish a correction in the European Patent Bulletin (see J 14/87, OJ EPO 1988, 295). The "Guidelines for examination in the EPO" (E-XI, 1) likewise assume that publication does not take place once notice of appeal has been filed.
2.4 The consequences of the failure to prevent publication are indeed important.
First, the period for filing notice of opposition runs as from publication of the mention of grant in the European Patent Bulletin. Since an appeal does not change the date of a decision and only suspends its effects, it is evident that no action should be taken once an appeal has been filed and, in particular, no action which might deprive the appeal of its purpose.
Second, the public, relying on the official publication data, might be led to file oppositions on the basis of incorrect information, thereby needlessly incurring potentially considerable costs.
3. In order to avoid any such consequences so far as possible, the board has decided to examine this appeal as a matter of priority, and to hand down the present interlocutory decision addressing only the purely procedural question of the consequences of the present appeal's suspensive effect. The board will rule in due course on the substance of the case (ie whether the appellant's requests are well-founded) and on its request that the appeal fee be refunded.
4. In view of the date of the present decision, the effects of publication of the mention of grant of the patent can be cancelled only by publishing a correction in the first available European Patent Bulletin subsequent to the issue dated 7 December 1994, stating that the mention of grant is suspended as a result of the suspensive effect of the present appeal.
For these reasons it is decided that:
The EPO will publish a correction, in the next available issue of the European Patent Bulletin, informing the public that 7 December 1994 is not to be considered the date of grant, within the meaning of Articles 64(1) and 97(4) EPC, of European patent No. 0 475 825 corresponding to European patent application No. 91 402 380.9.