J 0009/06 24-10-2007

I. The appeal lies from the decision of the Legal Division dated 8 December 2005 upholding the suspension of the grant proceedings before the European Patent Office (EPO) pursuant to Rule 13(1) EPC in respect of European patent application No. 01 271 394.7 as from 15 July 2004 and rejecting the request not to suspend proceedings.

II. The present European patent application is based on international application PCT/IB01/02492 (hereafter the "international application") filed on 17 December 2001 and published as WO 02/50125, claiming priority from patent applications US 09/738,879 (hereafter the "US priority application 1")and US 09/950,003 (hereafter the "US priority application 2"). Both US priority applications claim priority from the Italian patent application MI2000A000665 (hereafter the "Italian application").

III. In a letter dated 8 July 2004, received at the EPO on 13 July 2004, a third party filed a request for suspension of the proceedings for grant pursuant to Rule 13(1) EPC on the grounds that proceedings concerning the entitlement to the European patent application in suit had been initiated against the joint applicants before the Italian Court of Milan, together with a copy of the "writ of summons" of 20 May 2003 and a translation thereof into English. The confirmation copy was filed on 15 July 2004.

Request 4 of this writ of summons reads:

"To find and declare all the rights connected with the patent which is subject of application nº MI2000A000665 - including the right to extension abroad and in particular to the territory in the United States of America - belong to INALCO and, therefore, to authorise INALCO to hold in its name the US patent applications nº 09/738,879 and nº 09/950,003, with a transfer of the patent eventually granted in favour of INALCO."

IV. By a communication dated 3 November 2004 the Legal Division informed the applicants and the third party that the proceedings before the EPO had been suspended in respect of the present European patent application as from 15 July 2004 and that the third party had not consented to the continuation of the grant proceedings.

V. In a letter received on 27 December 2004 at the EPO the applicants requested that the proceedings for grant not be suspended and, as an auxiliary request, that an appealable decision be issued and for the EPO "to set a date in which the proceedings will be continued". They submitted evidence that they had filed a law suit against the third party at the Court of Milan on 12 February 2001, i.e. well before the respondent filed its writ of summons, and that they had asked the Court of Milan to ascertain and declare that they had acquired the absolute freedom of disposing of the invention disclosed in the Italian application and of the rights deriving from it, including further technical developments. They also submitted that such developments, being distinct new subject-matter with respect to the Italian application, were added to the US priority applications 1 and 2. This subject-matter was then claimed in the subsequent European patent application in suit.

VI. The Legal Division issued a decision on 8 December 2005 stating that, pursuant to Rule 13(1) EPC and in view of the case law of the Boards of Appeal (J 28/94, OJ EPO 1997, 405, point 3 of the Reasons and T 146/82, OJ EPO 1985, 267, point 2 of the Reasons), the EPO had to suspend grant proceedings in respect of the present European patent application ex officio "without having a discretionary power and without hearing the patent proprietor", since the third party had filed sufficient proof for the opening of entitlement proceedings against the applicants of the European patent application in suit before the Italian Court of Milan and it did not consent to the continuation of proceedings. The Legal Division thus rejected the request to continue proceedings and stated that the proceedings remained suspended as from 15 July 2004.

VII. By a letter received on 13 February 2006 at the EPO, the applicants requested the Legal Division to "restart" the grant proceedings and filed a copy of decision No. 4080/05 dated 20 April 2005 of the Court of Milan (hereafter the "Judge Bonaretti" decision) and a copy of the third party's appeal against said decision. In the applicant's view there were no entitlement proceedings pending with respect to the present European patent application because this application was not reassigned to the third party in the "Judge Bonaretti" decision and, in its appeal against this decision before the Italian court, the third party did not ask for the reassignment of the present application. Thus the European patent application in suit remained in the name of the applicants.

As an auxiliary measure, the applicants requested an appealable decision.

VIII. On 17 February 2006 the applicants (appellants) filed a notice of appeal against the Legal Division's decision and paid the appeal fee. The statement setting out the grounds of appeal was filed on 18 April 2006.

IX. By letter of 18 May 2006, the Legal Division informed the appellants and the third party (respondent) that it had decided not to rectify the contested decision and the present appeal was remitted to the Legal Board of Appeal.

X. The Board summoned the appellants and the respondent to oral proceedings. By a communication pursuant to Article 11(1) of the Rules of Procedure of the Board of Appeal (RPBA) dated 31 August 2007, the Board set out its preliminary and non-binding opinion on the merits of the appeal.

The Board first pointed out that the requirements of Rule 13(1) EPC for suspending the grant proceedings did not seem to have been met, since the documents submitted by the respondent did not provide sufficient evidence that the respondent had opened entitlement proceedings against the appellants. In the Board's preliminary view none of the requests in the respondent's writ of summons of 20 May 2003 appeared to be clearly and unambiguously directed to a finding of the national court that the third party rather than the applicants was entitled to the grant of the European patent in suit. The requests in the writ of summons were directed to the adjudgement of the entitlement with regard to the US priority applications and the Italian application. The Board noted that it was not possible for the EPO, nor was it its function in the context of the examination of a request to suspend proceedings under Rule 13 EPC to examine to what extent, if any, the subject-matter contained in a European patent application in respect of which suspension was requested might correspond to the subject-matter of another application, ownership of which was disputed before a national court. The Board further set out that if there was any need or room for interpretation of the meaning of a claimant's request in a law suit before the national court, it was within the sole competence of that national court to interpret the extent of the claimant's claim and it was not for the EPO to perform any such interpretation in the context of a decision on suspension.

With regard to the continuation of the grant proceedings the Board set out that, even if the suspension of proceedings was justified under Rule 13(1) EPC, in accordance with Rule 13(3) EPC, it lay within the discretion of the EPO to decide ex officio or upon request on which date proceedings were to continue regardless of the state reached in the national entitlement proceedings.

XI. In response to this communication the respondent made further submissions and filed inter alia a table in which the claims of the international application and of the US priority application 2 (US 09/950,003) were presented synoptically.

XII. In a letter dated 17 October 2007, the appellants made further submissions and filed a full copy of the interim decision 10397/05 dated 27 September 2005 of the Court of Milan (hereafter the "Judge Rosa" decision) and the respondent's summary of conclusions filed on 20 October 2003 in said national court proceedings.

XIII. Oral proceedings were held on 24 October 2007. During these proceedings the respondent presented a copy of the English translation of page 2 of the conclusions of the respondent which had been already filed in Italian by the appellant (see point XII above). The appellants requested that the decision under appeal be set aside, and that the proceedings for grant be resumed as soon as possible.

XIV. The respondent requested that the appeal be dismissed, or in the auxiliary that examination proceedings for grant be resumed in September 2008. Further it requested that the present Legal Board of Appeal be enlarged by the addition of a technically qualified member.

XV. The appellants' arguments presented in writing and during oral proceedings, insofar as relevant to the present decision, can be summarised as follows:

Composition of the Legal Board of Appeal

The respondent's request for enlarging the Board by the addition of a technically qualified member should be refused since such a change of the Board's composition was not possible under the EPC and even if it were, it would cause unnecessary delay to the appeal proceedings.

Late-filed document

The copy of the English translation of page 2 of the respondent's conclusions was presented by the respondent at a very late stage of the proceedings before the Board, i.e. during the oral proceedings, and therefore was late-filed. There was not sufficient time for the appellants to check the correctness of this translation. Page 2 was also absolutely irrelevant because neither the international application nor the European patent application in suit were mentioned therein. Thus the translation should not be admitted into appeal proceedings.

Suspension of proceedings

The requirements for suspension under Rule 13(1) EPC were not fulfilled because entitlement proceedings had not been not opened before the Court of Milan with respect to the European patent application in suit.

The question in the present case was whether or not it was clear from the respondent's writ of summons and conclusions that entitlement proceedings with respect to the European patent application in suit had been opened. This question should be answered without interpreting the respondent's requests broadly. Also in decision J 6/03 of 29 September 2004 the requests made in proceedings before the Canadian court were not interpreted in a broad manner. The facts in decision J 6/03 were different from those in the present case. As pointed out in the Board's preliminary opinion, the interpretation of unclear requests was within the competence of the national court. The legal questions concerning the ownership of a patent could not be discussed before the EPO. It was not the task of the Legal Board of Appeal to interpret the requests of the legal proceedings before a national court.

In the evidence on file it was nowhere explicitly mentioned that the present European patent application should be in the ownership of the respondent. There was also no reference to all applications filed by the appellants in these documents. Request 4 of the writ of summons did not relate to the present application since the international application published as WO 02/50125 was not mentioned therein, although the respondent was aware of its existence. The starting point in the respondent's writ of summons and conclusions was always the Italian application. In the second half sentence of page 2, point C) of the conclusions the ownership was claimed with regard to "said applications". But this referred to those which were mentioned in the first half sentence of point C), i.e. the Italian application and "all corresponding foreign extensions". An "extension" was an application which claimed priority directly from the Italian application. This was true for the US priority applications. However, the European patent application did not claim priority from the Italian application. Moreover the appellants' international application was neither an extension of the priority rights of the Italian application, nor a copy of the applications filed by the respondent, but contained new subject-matter with respect to the Italian application.

In his interim decision Judge Rosa also stated that his court had no jurisdiction for deciding on the ownership of the US priority applications and that this matter should be decided by foreign authorities. Nothing was said however on the jurisdiction over deciding on the ownership of the international or European application. This meant that this was not the subject of a dispute. Thus entitlement proceedings had been opened before the Italian court only with respect to the US priority applications.

Continuation of proceedings

Since the suspension of proceedings for grant was not justified, proceedings should be continued as soon as possible, preferably on the date of the Board's decision.

Both parties appealed against the "Judge Bonaretti" decision and it would take about four years for a final decision in these proceedings to be reached - proceedings which neither related to the ownership of international application published as WO 02/50125 nor to the ownership of the present European patent application. In the interim decision proceedings before the Court of Milan were suspended as far as the original Italian application was concerned until a final decision in the "Judge Bonaretti" case was reached. Therefore, it would take even longer until a final decision was reached in this case.

XVI. The respondent's arguments presented in writing and during oral proceedings, insofar as relevant to the present decision can be summarised as follows:

Composition of the Legal Board of Appeal

The current state of proceedings showed the difficulty in completely separating the legal issues from certain technical considerations about the invention. For this reason it would be advisable to ensure that possible technical issues were discussed before a Legal Board of Appeal enlarged by the addition of a technically qualified member at oral proceedings.

Late-filed document

The copy of the English translation of page 2 of the respondent's conclusions should be admitted into the appeal proceedings since it was a translation of a page of a document which had already been filed in Italian by the appellants and which was highly relevant as evidence for the content of the respondent's writs of summons.

Suspension of proceedings

The decision of the Legal Division to suspend proceedings under Rule 13(1) EPC had been and was still fully justified.

There was no need to formulate a claimant's request in such a way that it literally repeated the wording of Rule 13(1) EPC, but it could also be formulated in other words. Such a request had to be interpreted broadly by the EPO, taking into account all circumstances of the case.

Such a broad interpretation of a claimant's request was applied in decision J 6/03, where the claim read:

"...an order requiring the defendants to assign to the plaintiffs any and all right, title and interest they own in the patent applications and any other related or corresponding patents or applications, and in the alleged inventions disclosed therein." (J 6/03, point II of the Facts and Submissions).

The facts of this decision were comparable to those of the present case. In Request 4 of the writ of summons neither the European patent application in suit nor the international application on which it was based were explicitly mentioned. However, in this Request, several patent applications which were connected with said European and international applications were referred to. Request 4 had to be read together with page 2, point C) of the conclusions where the transfer of the ownership of "all corresponding foreign extensions" was clearly requested. Thus a general reference to all applications, which were discussed in the writ of summons as a whole, was made. It was clear from the writ of summons that all applications cited therein should be in the respondent's name. The appellants' understanding that "all corresponding foreign extensions" were only applications which claimed priority from the Italian application was not correct. "Extension" meant any patent application or patent which claimed the same invention as the Italian application. In the present case there was a cascade of applications which were nearly identical. A technically qualified member would know that adding subject-matter did not necessarily mean that a new invention was added. The fact that the US priority application 2 was a continuation-in-part application did not necessarily mean that a new invention had been added. Therefore, "said applications" in the second half sentence of point C) of the conclusions also comprised the present European patent application.

By interpreting a request broadly as was done in decision J 6/03, an unmistakable ownership claim was derivable from the wording of Request 4 of the respondent's writ of summons and conclusions. In its request to retain the US priority applications 1 and 2 in its name, the respondent claimed in fact that it was the person entitled to the grant of the European patent based on the present application. Since all independent claims were identical in the US priority application 2 and the present application as published, the application in suit definitely contained claimed subject-matter with respect to which the respondent had opened entitlement proceedings in Italy.

In addition, Request 6 of the writ of summons - which should be read in the sense of assuming the respondent's ownership of the applications mentioned therein - necessarily meant that the respondent did not recognise the appellants as the applicants entitled to the international application published as WO 02/50125. This claim had to be read in the light of the respondent's full description of the case which could be found in the writ of summons. On page 18, 2nd paragraph of the writ of summons it was clearly stated that the US priority applications and the international application were a copy of the Italian application filed by the respondent.

Continuation of proceedings

Even if the requirements for the suspension of the proceedings for grant were not met in the present case, the EPO would not be prevented from applying Article 61 EPC when a final decision is reached by the Italian courts. Proceedings before the EPO should therefore remain suspended until September 2008 because of the current stage of the Italian court proceedings. The suit concerning the "Judge Bonaretti" case would be decided in four months at the latest. The same applied to the "Judge Rosa" case. The delay in the latter case before the Italian courts was caused by the appellants and not by the respondent so that no delaying tactic was being undertaken by the present third party.