G 1/12

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G 1/12
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Enlarged Board of Appeal of the European Patent Office

Contents

Issued 30 April 2014
Board composition
Chairman: Wim Van der Eijk
Members: T. Kriner, R. Menapace, C. Rennie-Smith, U. Oswald, A. Pézard, M. Vogel, G. Weiss
Headword
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G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal. [1]

Background

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the EPO. The appeal procedure before the EPO is a judicial procedure proper to an administrative court, [2] and the EPO Boards of Appeal have been recognised as courts, or tribunals, of an international organisation, the EPO. [3]

When an appeal is lodged, the notice of appeal has to contain specific information including "the name and the address of the appellant", "an indication of the decision impugned", and "a request defining the subject of the appeal". [4] The question has arisen as to whether the name of the appellant could be corrected after filing the notice of appeal, and questions have been referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC in that regard.

Questions referred to the Enlarged Board of Appeal

The referral to the Enlarged Board of Appeal lies from an interlocutory decision T 445/08 [5] from Technical Board of Appeal 3.3.07. The referred questions were:

(1) When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the Appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to "deficiencies" provided by Rule 101(2) EPC?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the Appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

Answers to the referred questions

The Enlarged Board of Appeal answered these questions as follows:

(1) The answer to reformulated question (1) - namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met.

(2) Proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration in the present referral.

(3) In cases of an error in the Appellant's name, the general procedure for correcting errors under Rule 139 EPC, first sentence, is available under the conditions established by the case law of the Boards of Appeal.

(4) Given the answers to questions (1) and (3), there is no need to answer question (4).

This means that the flexible approach adopted in earlier decision T 97/98 has been confirmed. [1] Namely, the name of the appellant may be corrected to substitute another natural or legal person for the person indicated in the notice of appeal if the real intention was to file the appeal in the name of that person.

Practical aspects

As to answer (3), point 37 of the reasons for the decision G 1/12 provides practical guidance on how to correct an Appellant's identity under Rule 139 EPC, first sentence. The correction must at least satisfy the following requirements:

(a) The correction must introduce what was originally intended.

(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one.

(c) The error to be remedied may be an incorrect statement or an omission.

(d) The request for correction must be filed without delay.

As to requirement (d), a decision T180/14 of April 2019 deals with a delay of four and a half years, "after the appellant had been made aware of the error for the second time". That delay did not satisfy the "without delay" requirement. [6]

Applicability in opposition proceedings

The principles laid out in G 1/12 can also be used in opposition proceedings to correct the designation of the opponent in the notice of opposition. [7] [8]

Related Research Articles

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

A reformatio in peius occurs in law when as the result of an appeal, the appellant is put in a worse position than if there had been no appeal. For example, an appellant in a criminal case might receive a more severe sentence on appeal than in their original trial.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter going beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant. In addition, Rule 80 EPC limits the types of amendments that can be done during opposition proceedings before the European Patent Office (EPO), and Rule 139 EPC relates to the correction of errors in documents filed with the EPO.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Guidelines for Examination in the European Patent Office are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed even after the refusal of an application. More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC.

G 1/13 is a decision issued on 25 November 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that in opposition proceedings a retroactive effect of a restoration of a company must be recognised by the EPO. In other words, a restoration of a company has retroactive effect before the EPO when it has such retroactive effect under national law.

G 2/93 is a decision issued on 21 December 1994 by the Enlarged Board of Appeal of the European Patent Office (EPO). The decision deals with deposits of biological material. More specifically, the decision deals with the time limit for the deposit of such material. The current provision in Rule 32(2)(a) EPC provides for a time limit of sixteen months from the date of filing or from the date of priority, whichever expires earlier.

G 4/95 is a decision issued on 19 February 1996 by the Enlarged Board of Appeal of the European Patent Office (EPO). The decision deals with oral submissions by an accompanying person in opposition or opposition appeal proceedings, and more specifically the extent and the circumstances under which an accompanying person or similar may add to the authorized representative's submissions during oral proceedings. The Enlarged Board of Appeal held that an accompanying person may be allowed to make oral submissions in relation to either legal or technical issues provided that the authorized representative maintains overall control at all times and "under the overall discretionary control of the EPO".

References

  1. 1 2 Teschemacher, Rudolf (2014). "Aktuelle Rechtsprechung der Beschwerdekammern des EPA – Notizen für die Praxis" [Current case law of the Boards of Appeal of the EPO - Notes for the practice]. Mitteilungen der deutschen Patentanwälte (in German). 8–9. Carl Heymanns Verlag: 379–384. (see section 1.1.1)
  2. ↑ "In decision G 1/99 (OJ 2001, 381) the Enlarged Board held that the appeal procedure is to be considered as a judicial procedure (see G 9/91, OJ 1993, 408, point 18 of the Reasons) proper to an administrative court (see G 8/91, OJ 1993, 346, point 7 of the Reasons; likewise G 7/91, OJ 1993, 356)." in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.1.1 : "Legal character of appeal procedure" > "General".
  3. ↑ G 2/06, Reasons 4 Archived 2013-01-15 at the Wayback Machine , Official Journal EPO 5/2009 page 318 par. 4: "Whereas EPO Boards of Appeal have been recognized as being courts or tribunals, they are not courts or tribunals of an EU member state but of an international organization whose contracting states are not all members of the EU."
  4. ↑ Rule 99(1) EPC; see also Article 108 EPC.
  5. ↑ Decision T 445/08 of 30 January 2012
  6. ↑ "T 0180/14 () of 18.3.2019". www.epo.org. European Patent Office. Retrieved 23 July 2022. (see reasons 2)
  7. ↑ Müller, Marcus O.; Mulder, Cees A. M. (31 January 2020). Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal, Second Edition. Edward Elgar Publishing. section 3.2.3. ISBN   978-1-78811-532-2.
  8. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), iv.c.2.2.4 : "Identity of opponent and correction of opponent's name"

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