BOARDS OF APPEAL
Decisions of the Enlarged Board of Appeal
Referral by the President of the EPO under Article 112(1)(b) EPC following divergent decisions by two boards of appeal
Case pending as G 1/02
To ensure uniform application of the law, and in view of their importance, under Article 112(1)(b) EPC I hereby refer to the Enlarged Board of Appeal the following points of law in connection with the "Notice of the Vice-President of Directorate-General 2 of the EPO concerning the entrustment to formalities officers of certain duties normally the responsibility of the Opposition Divisions of the EPO, dated 28 April 1999" (OJ EPO 1999, 506):
1. Does point 6 of the Notice conflict with provisions of a higher level?
2. Does point 4 of the Notice conflict with provisions of a higher level?
1. The divergent decisions
1.1 T 295/01, taken by Board 3.3.4
In this particular case, the opposition period expired on 12 August 1998. Notice of opposition filed by fax by Opponent 8 was received at the EPO, according to its fax machine printout, between 00.01 hrs and 00.17 hrs on 13 August 1998. A debit order of DEM 1 200 for the opposition fee was sent at the same time. On 9 December 1998 the formalities officer sent Opponent 8 a notice of loss of rights under Rule 69(1) EPC, saying that notice of opposition was deemed not filed under Article 99(1) EPC due to late payment of the opposition fee. Opponent 8 then requested a decision under Rule 69(2) EPC. On 23 June 2000 the formalities officer issued this decision, saying that Opponent 8's request that the communication be set aside was refused under Rule 69(2) EPC and notice of opposition was deemed not to have been filed because the opposition fee had not been paid in time. Opponent 8 appealed against this decision.
The board of appeal set the contested decision aside as null and void, having been taken by someone (the formalities officer) not competent to do so. The board held that point 6 of the "Notice of the Vice-President of Directorate-General 2 of the EPO concerning the entrustment to formalities officers of certain duties normally the responsibility of the Opposition Divisions of the EPO, dated 28 April 1999" (hereinafter the "Notice of 28 April 1999") conflicted with provisions of a higher level, namely Rules 9(3) and 56(1) EPC, which thus prevailed in analogy with Article 164(2) EPC. Whether an opposition was admissible was for the opposition division to decide; this could not be entrusted to a formalities officer. The President's powers under Rule 9(3) EPC could not extend to entrusting EPO employees with duties (or powers) which, pursuant to other provisions of equal ranking in the hierarchy of the law, fell within the competence of someone else. It followed that the Notice of 28 April 1999 could not include the exercise of powers which under provisions of a higher level (such as the Implementing Regulations) pertained to someone else. It was not by chance that the legislator used the expression "execution of individual duties falling to the ... Opposition Divisions" in Rule 9(3) EPC. This meant that only individual tasks could be entrusted to formalities officers, and not the exercise of powers such as deciding on the admissibility of an opposition. This interpretation was supported by the fact that under Rule 9(3) EPC only (individual) duties involving inter alia no legal difficulties could be thus entrusted. That did not include decisions on the admissibility of oppositions, which could involve the solution of complex legal problems, as illustrated by the present case (Reasons 4.1).
1.2 T 1062/99, taken by Board 3.2.1
This case too involved an opposition filed (and fee paid) after expiry of the opposition period (albeit following opposition appeal proceedings in which the patent was maintained in amended form). The formalities officer responded by letter that the opposition was inadmissible as out of time; the opposition fee would be refunded. The first issue in the ensuing appeal was whether an appeal was actually permissible. The board held that it was, because the formalities officer's letter was an appealable decision. It made no difference that the decision had been taken not by the opposition division itself but by a formalities officer on its behalf (Reasons 1.2), that being in accordance with the internal allocation of duties devised by the EPO for its own operational efficiency. Under Rule 9(3) EPC the President could entrust to non-examiners certain duties of the examining and opposition divisions. Under point 6 of the Notice of 28 April 1999, these included the rejection of an opposition as inadmissible. Despite this delegation of decision-making powers, what was actually issued still remained an opposition division decision; the formalities officer was merely acting on the division's behalf. Delegation did not empower the formalities officer in his own right. Rather, the formalities officer took a decision within the opposition division's existing powers.
The board concluded by dismissing the appeal on the grounds that the formalities officer had been right to regard the notice of opposition as late-filed and consequently inadmissible. It thus upheld his decision.
2. How the decisions diverge
2.1 T 295/01 clearly says that formalities officers have no power to decide on the admissibility of an opposition. For that reason, in Board 3.3.4's view, the formalities officer's decision was to be considered null and void, and the appeal therefore allowed.
2.2 In T 1062/99, on the other hand, Board 3.2.1 says it makes no difference that the decision was taken not by the opposition division itself but by a formalities officer on its behalf. Looking then at the substance, the board ruled that the decision issued was correct, and therefore dismissed the appeal. It thus affirmed that the formalities officer was competent to take it.
Pace Board 3.3.4, Board 3.2.1's comments about formalities officers' powers cannot be regarded as obiter dictum. Whether the right person issued a decision must always be examined ex officio. A formalities officer's decision must be set aside if he was not empowered to take it by way of delegation under Rule 9(3) EPC (see T 114/82 and T 115/82 (OJ EPO 1983, 323)). It matters not, in this connection, whether such a decision is considered null and void or merely appealable (as in T 114/82, T 115/82 and T 1101/99 of 10 April 2001). If Board 3.2.1 had not upheld the formalities officer's power to take the decision, it would have had to allow the appeal.
But even if the comments in T 1062/99 were obiter dictum, they were still made in a decision. Obiter dictum remarks can still cause considerable legal uncertainty and justify referral, as was acknowledged by the Enlarged Board in opinion G 3/93 (OJ EPO 1995, 18).
3. The importance of the points of law in question
Who can do what is a question of considerable practical and legal importance. The purpose of Rule 9(3) EPC is to relieve examining and opposition divisions of duties involving no technical or legal difficulties, thus ensuring rational and efficient use of Office resources. Formalities officers are trained in the proper performance of the duties allocated to them, with which the technically qualified examiners of opposition divisions then no longer need concern themselves. This means that such entrusted duties are part of a formalities officer's daily work; only exceptionally will they be considered by the opposition division, which is therefore not necessarily more competent at them. Furthermore, as a rule a given formalities officer works for several opposition divisions, and therefore more frequently encounters admissibility issues which for individual divisions tend to be the exception. Inability to delegate these duties would mean a lot of extra work; the entire division would then have to address the problem.
The legal importance of this point of law derives from the fact that any decision taken by an unauthorised person must be set aside and referred back to the right department for decision (see T 114/82, T 115/82 and T 1101/99). The divergent decisions make it unclear whether past practice can continue, thus causing considerable legal uncertainty.
4. Basis for EPO practice hitherto
4.1 Article 15 EPC lists the departments charged with the procedure. Under Article 19(1) EPC, opposition divisions are responsible for examining oppositions against European patents. They consist of three technical examiners, and may be enlarged by a legally qualified one (Article 19(2) EPC). Neither Article 15 EPC nor Article 19 EPC mentions the formalities officer, who is therefore not a separate department with independent powers. Such powers as he exercises must therefore be lawfully delegated to him. This can be done under Rule 9(3) EPC, which empowers the President to entrust to EPO employees who are not technically or legally qualified examiners the execution of individual duties falling to examining or opposition divisions and involving no technical or legal difficulties. On 6 March 1979 the President delegated that power to the Vice-President DG 2, who on 8 January 1982 issued the first notice exercising it (OJ EPO 1982, 61). This was later amended by the Notices of 15 June 1984 (OJ EPO 1984, 319), 1 February 1989 (OJ EPO 1989, 178) and finally 28 April 1999 (OJ EPO 1999, 506), their point 6 remaining unchanged throughout and entrusting formalities officers with "decisions in ex parte proceedings on the inadmissibility of the opposition and the intervention of the assumed infringer with the exception of the cases provided for in Rule 55(c) EPC."
4.2 Board 3.3.4 found this provision to be ambiguous, because it used the expression "ex parte proceedings" with reference to the opposition procedure, which was by definition inter partes. This objection is indeed justified: the patentee, as well as the opponent, is always party to opposition proceedings and any decision taken affects him for better or worse.
4.3 In the present context, however, "ex parte" is used not in the above sense but to describe the initial examination of admissibility, which is ex parte because the patentee is not involved. The basis for this is Rule 56(3) EPC, and its travaux préparatoires. This provision says that any decision rejecting a notice of opposition as inadmissible must be communicated to the patentee, together with a copy of the notice. It was included to make sure that patentees received a copy of the notice of opposition in such cases. It was felt to be necessary because the legislator assumed that admissibility would be decided without involving the patentee (report on the 9th meeting of Working Party I, Luxembourg, 12 to 22 October 1971, BR/135/71, point 134). This aspect is also brought out clearly by van Empel ("The Granting of European Patents", Leyden 1975), when he says in point 472 that "On principle decisions on admissibility of opposition are taken by an Opposition Division without any action to be taken by the patentee. Only after the decision has been taken - be it positive or negative - it is communicated to the patentee together with the notice of opposition in question (Rules 56(1) and 57(1))". Only if the opposition is considered admissible is it communicated to the patentee and the latter invited to file any observations (Rule 57(1) EPC). It is only at this point that the inter partes procedure starts, with the patentee now also involved, and the formalities officer's procedural responsibility ends. The patentee may of course respond by arguing that the opposition is inadmissible. That however is then a matter for the opposition division (see also Gerald Paterson "The European Patent System", second edition 2001, 3-35, 3-36; page 103).
4.4 Nor does the patentee need to be involved when admissibility is examined; the Office can check compliance with the requirements itself, and - as the boards of appeal have found in numerous decisions (see "Case Law of the Boards of Appeal of the European Patent Office", 4th edition 2001, page 462) - is required to do so ex officio. If it needs to involve the patentee in specific cases, it can change to inter partes proceedings at any time. The present system is thus flexible enough to ensure procedural efficiency.
4.5 The EPO Guidelines for Examination (D-IV, 126.96.36.199 and 188.8.131.52) list the criteria for an admissible opposition, drawing a distinction - based on Rule 56(1) and (2) EPC - between those which must be fulfilled during the opposition period and those which can still be made good thereafter. Those listed in point 184.108.40.206 are purely formal and in practice would not seem to involve either technical or legal difficulties. Of those listed in point 220.127.116.11, only those under (i), (ii) and (vi) are decided by the formalities officer; the others come under Rule 55(c) EPC and so cannot be delegated. Sub-paragraph (i) is about whether the notice of opposition was filed within the nine-month period, whereas (ii) and (vi) involve checking that the patent and the opponent have been clearly identified. Here Board 3.3.4 says that the case in point, which concerned compliance with the nine-month period, showed that admissibility decisions involved solving complex legal questions. As a rule, however, such cases are not so complex, because calculating time limits is subject to clear rules and one of a formalities officer's regular duties. Establishing the necessary facts is likely to be more problematic, but that too is not something which in itself gives rise to technical or legal difficulties.
5. I am also referring the question of how far formalities officers are entrusted, under point 4 of the Notice of 28 April 1999, with responsibility for "communications under Rule 69(1) and decisions, and informing the person requesting the decision, under Rule 69(2) EPC". This I am doing for the following reason:
5.1 Both in T 1062/99 and in T 295/01, in which the boards commented on the opposition's inadmissibility, the issue was whether the notice of opposition was deemed to have been filed. Under Article 99(1), third sentence, EPC, notice of opposition is not deemed filed until the opposition fee has been paid. Thus the opposition fee has to be paid within the opposition period. In the case which gave rise to T 295/01, the formalities officer followed the procedure laid down in Guidelines D-IV, 1.4.1, and first issued a communication under Rule 69(1) EPC. When a decision was requested, he issued one under Rule 69(2) EPC finding that notice of opposition was deemed not to have been filed. So he took no decision about admissibility, and thus was performing a duty entrusted to him not under point 6 of the Notice of 28 April 1999 but under its point 4. The case which gave rise to T 1062/99 also involved a late-paid opposition fee, but here the formalities officer stated in his "decision" that the appeal was inadmissible. Again, however, the basic issue was whether notice of opposition was deemed to have been filed.
5.2 For both admissibility and deemed filing, the point is whether the nine-month opposition period under Article 99(1) EPC has been complied with. The former means filing the notice of opposition in time, the latter means paying the fee in time. Since the fee is very often paid by debit order from a deposit account, this amounts in both cases to much the same issue - whether the relevant papers were filed in time. Legally there is a distinction between deeming notice of opposition not filed and regarding it as inadmissible: an opposition is examined for admissibility only if it is deemed to have been filed (Guidelines D-IV, 18.104.22.168). So the first step is always to check the payment. Once a decision is taken to the effect that the opposition is deemed not to have been filed, the opposition fee is refunded, because the opposition is then considered never to have existed and payment was therefore made for no reason (Guidelines D-IV, 1.4.1). That was the formalities officer's assumption in T 1062/99, because he had ordered such a refund. But if the opposition is rejected as inadmissible, the fee is not refunded.
5.3 Thus admissibility and deemed filing are two different questions to be considered separately. In practice, both are decided by formalities officers. Hence the two separate provisions in the Notice of 28 April 1999. However, since the two questions are so closely linked - and given that both T 1062/99 and T 295/01 were essentially about whether notice of opposition was deemed to have been filed - I consider it appropriate to refer this additional question too to the Enlarged Board. Were the Enlarged Board to comment only on point 6 of the Notice of 28 April 1999, legal uncertainty about the actual underlying cases would persist.