Résumé de EPC2000 Art 061(1) pour la décision J0001/23 du 27.03.2024

In J 1/23 a third party had provided evidence to the EPO that it had instituted proceedings in Sweden against the registered applicant (appellant) seeking a decision within the meaning of Art. 61(1) EPC. The Legal Division had stayed the grant proceedings under R. 14(1) EPC. After the Swedish (appeal court) decision was handed down, the third party had requested to be included as co-applicant of the European patent application. In the decision under appeal, the Legal Division had held that the Swedish decision was a final decision within the meaning of Art. 61(1) EPC granting half of the right to the grant of the European patent to the third party, and the proceedings were resumed with the registered applicant and the third party as co-applicants. The board explained that under R. 14(2) EPC, where evidence was provided that a final decision within the meaning of Art. 61(1) EPC had been taken, the EPO had to inform the applicant and any other party that the proceedings for grant were to be resumed as from the date stated in the communication. The EPO, in deciding on the stay or resumption of the grant proceedings under R. 14(1) and (2) EPC, only had to ascertain that the national proceedings invoked by the third party were indeed entitlement proceedings within the meaning of Art. 61 EPC. It was undisputed that the Swedish decision was a final decision. The appellant, however, contended that it did not qualify as a decision adjudging that the third party was entitled to half of the European patent application within the meaning of Art. 61(1) EPC. In its view, the Swedish court could not decide on entitlement to the application because a passage referring to the "patent applications" had been removed from the third party's request in the Swedish appeal proceedings. The board disagreed with the appellant's assertion. Entitlement decisions by national courts under Art. 61(1) EPC were expected to look different from one case to another. The wording of decisions in similar cases may vary accordingly. The key question was whether, in the particular case, the EPO interpreted the decision as a final entitlement decision within the meaning of Art. 61(1) EPC. In the case in hand, even in the absence of an explicit reference to "all patent applications and patents that may be issued thereof", the entitlement to the invention as specified in the application inherently implied entitlement to the grant of a European patent based on the application. The appellant also pointed out that there was no reference in the Swedish decision to any legal or contractual basis for the transfer of rights from the inventors to the third party. Citing J 8/20, it argued that the EPO had to examine, even if only formally, whether the statement filed under Art. 81 EPC identified an origin for the right to the patent within the scope of Art. 60(1) EPC. The board disagreed. The statement under Art. 81, second sentence, EPC indicating the origin of the right to the patent had to be submitted by the applicant together with the request for grant (R. 19 EPC). The conclusion reached in J 8/20, stipulating that the EPO had to examine whether a statement filed under Art. 81, second sentence, EPC fell within the scope of the EPC, did not apply to the circumstances of the present case. In cases where a final sovereign decision of a national court had determined that a person other than the applicant was entitled to the grant of the European patent under Art. 61(1) EPC, the matter of how and by whom the right to the patent had been acquired was considered and settled by the competent national court, and the EPO was bound by the court's conclusion (Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent). The EPO was not competent to examine the substance and merits of the court's decision (G 3/92).