J 0012/83 (Inadmissible appeal) of 9.11.1984

Summary of Facts and Submissions

I. On 11 June 1981, the appellant filed a European patent application under No. 81104560.8, claiming priority from a Japanese national patent application made on 13 June 1980. Ten Contracting States, including Ausria, were designated in the European patent application. All claims of the application as filed were directed to compositions for treating diseases in circulatory organs. The title of the application also indicated that it related to such compositions.

II. Under Article 167 (2) EPC, Austria has reserved the right to provide in its national law that European patents, in so far as they confer protection on pharmaceutical products as such, shall in accordance with the provisions applicable to national patents, be ineffective or revocable.

III. The European search report was sent to the appellant’s representative in January 1982 and the request for examination was filed on 16 April 1982. On 19 December 1982, an Examiner acting for the Examining Division consulted the appellant’s representative by telephone concerning minor amendments to Claim 1, which were agreed.

IV. Thereafter, on 16 February 1983, advance notice of intention to grant a European patent was issued and the appellant was given a period of two months within which to submit any desired amendments. None was submitted. Then, on 13 May 1983, the Examining Division issued a Communication under Rule 51 (4) and (5) EPC indicating that it was intended to grant the patent in the text previously submitted, subject to the agreed amendments to Claim 1.

V. On 12 August 1983, the appellant’s representative responded to the Communication under Rule 51(4) and (5) EPC by filing translations of the accepted claims and paying the grant and printing fees. On 19 September 1983, the appellant’s representative requested correction of an obvious error in the description, a correction which was subsequently made by the printer.

VI. On 29 September 1983, the Formalities Officer acting for Directorate General 2 of the EPO issued the decision to grant the patent, which would take effect from 23 November 1983, pursuant to Article 97(4) EPC.

VII. On 11 November 1983, the appellant filed the present appeal against the decision to grant the patent, requesting that the decision be rectified or that the decision be revoked and the grant of the patent be allowed with the separate set of process claims for Austria which was enclosed with the Notice of Appeal. The Notice of Appeal incorporated a Statement of Grounds of the appeal. The appeal fee was duly paid.

VIII. At the appellant’s request, oral proceedings were appointed for 30 May 1984. In a Communication before Oral Proceedings, the Legal Board of Appeal drew attention to

(1) the difficulty of accepting that, in the legal sense, the appellant was adversely affected by the decision under appeal, which was necessary if the appeal were to be held admissible and

(2) the difficulty in allowing the appeal, having regard to the true effect of Article 167 (2) EPC, if the appeal were admissible.

IX. In the course of the oral proceedings, the appellant’s representative submitted inter alia that it was the practice of at least some Examining Divisions of the EPO to draw the attention of applicants to any lack of process claims in pharmaceutical patent applications for which Austria was a designated State and to transform product claims into process claims. It was submitted that the appellants had not been given equal treatment with other applicants. The Board decided that it was necessary to investigate EPO office practice in this matter and that, in the special circumstances, the proceedings should be continued in writing unless the representative asked for a further hearing.

X. After the hearing, the appellant was notified in writing by the Board that investigation had shown that there was no established practice of EPO Examining Divisions whereby product claims for pharmaceutical compositions were automatically transformed into process-claims for Austria.

XI. By letter dated 27 August 1984, the appellant’s representative drew attenti on to a specific case, not previously drawn to the Board’s attention, in which an Examiner had reminded an applicant that Austria had made a reservation under Article 167 (2) EPC. The representative further argued that the appellant was adversely affected by the decision to grant the patent since no valid claims for Austria were granted with the patent. The request that a patent be granted for Austria had never been renounced and it was self-evident that the appellant had the intention of obtaining a valid and enforceable patent for Austria. The representative also contended that the patent had been granted on the basis of a text to which the appellant had not declared its approval. Further, if it was considered that the payment of the granting fee was tacit consent, it should be possible to rescind the decision given as there was error in the giving of con sent which contradicted the original request for grant. Rescission or supplementing of the decision under appeal was requested.

XII. In a letter dated 5 November 1984 the appellant’s representative mentioned another specific case in which an applicant’s attention had been drawn to the fact that Austria had made a reservation under Article 167 (2) EPC.

Reasons for the Decision

1. In order for an appeal to be admissible, it must comply with the provisions of Articles 106-108 and Rule 64 (b) EPC (and, in opposition proceedings, also with Rule 1 (1) EPC). An appeal that does not comply with these Articles and Rules has to be rejected as inadmissible unless any deficiency has been remedied before the relevant time limit laid down in Article 108 has expired: Rule 65 (1) EPC.

2. In the present case, the Legal Board of Appeal has raised the objection that the appellant is not a party “adversely affected” by the decision to grant the European patent to the appellant, within the meaning of Article 107 EPC.

3. The Board accepts that, in some circumstances, an applicant for a European patent can be “adversely affected”, within the meaning of Article 107 EPC by a decision to grant the patent. This would clearly be so, for example, if the patent were granted with a text not approved by the applicant, contrary to Article 97(2)(a) EPC. However, approval, for the purposes of that Article, has to be established “in accordance with the provisions of the Implementing Regulations”, Rule 51 (4) of which provides, in effect, that approval is given if disapproval is not communicated within the period provided by the Rule. In the present case, no disapproval was communicated and it is clear from the facts summarised above that the decision to grant the patent was made on the basis of the description, drawings and claims submitted by the appellant, subject only to minor amendments to Claim 1 proposed by the Examining Division and agreed to by the appellant’s representative and also to the correction of a clerical error requested at the last moment by the representative.

4. In these circumstances, the Board does not accept the appellant’s argument that the patent was granted on the basis of a text to which the appellant had not declared its approval.

5. The appellant has argued (paragraph 3a of the letter dated 27 August 1984) t hat payment of fees and submission of translated claims is accepted as evidence of approval as a matter of Office practice and that, in the present case, this Office practice worked an injustice and that accordingly the appellant is “adversely affected”. In the considered opinion of the Board, having regard to the provisions of Article 97 (2) (a) and Rule 51 (4) EPC considered above, this argument is also unacceptable. No positive approval is required: positive disapproval is required to ensure that examination is resumed.

6. In the same letter, the appellant has further argued that there should be rescission of consent due to error on the part of the representative in failing to observe that no pharmaceutical process claims had been filed for Austria. As no express consent was required, or given in a document, the Board can see no basis for rescission.

7. It follows that the Legal Board of Appeal is not satisfied that the appellant is a party “adversely affected” by the decision to grant the European patent, within the meaning of Article 107 EPC. Accordingly the appeal must be rejected as inadmissible, in accordance with Rule 65 (1) EPC.

ORDER

For these reasons, it is decided that:

The appeal against the decision dated 29 September 1983 is rejected as inadmissible.