J 0005/81 (Publication of European patent application) 09-12-1981

Reasons for the decision

1. The appeal complies with Articles 106-108 and Rule 64 EPC and is therefore admissible. Although the application has since been published, there remains the right to an appeal under the terms of EPC Article 107, 1st sentence (cf. also in particular the French text thereof).

2. In the decision under appeal, Rule 48 EPC is regarded as entailing an obligation on the EPO to publish an application withdrawn after the key date on which the technical preparations for its publication were deemed to have been completed. However, the Rule merely says that an application discontinued prior to that key date will not be published, thus reliably assuring the applicant that by withdrawing the application prior to the key date he will also prevent publication. There is no basis though for the converse argument that applications withdrawn after the key date have to be published. A converse line of reasoning (argumentum e contrario) would only be appropriate if Rule 48(2) EPC had to be understood as meaning that the legal consequence ("shall not be published") may only ensue when the application is discontinued prior to the key date (see, for example, Larenz, Methodenlehre der Rechtswissenschaft (Methodology of Jurisprudence), 1979, 376). No such conclusion can be derived either from Article 93 in conjunction with Rule 48(2) EPC or from the provisions on which the latter Rule is modelled, namely PCT Article 21(1) and (5). PCT Rule 48.6 makes express provision for there to be no publication of applications considered withdrawn, so long as publication can still be prevented.

3. There are also general considerations which weigh against an obligation on the EPO to publish patent applications discontinued after the key date. Thus, a published European patent application becomes part of the state of the art under Article 54(3) EPC, with retroactive effect as from its filing date or priority date, in assessing applications filed after that filing date or priority date but prior to its publication. However, this should only apply if such a "prior application" is still in existence at the time of publication. Furthermore, under Article 139(1) EPC a published European patent application can have a national prior right effect too. It is therefore in the general interest to keep the number of "false" prior rights as low as possible. Potential difficulties in connection with the Register of Patents (Article 127 EPC) and Inspection of files (Article 128 EPC) should also be avoided if possible.

4. However, the Board of Appeal is unable to agree with the appellant's contention that an applicant is at liberty to prevent publication of his application right up to the final day of the 18-month period mentioned in Article 93 EPC. Like PCT Article 21 in the case of international applications, Article 93 EPC lays down the principle that all applicatons must be published promptly after 18 months. The Convention thus gives the public the right in principle to be informed after that period of all pending patent applications. In view of the preparations for printing and despatch of an entire set of applications for publication, the expense of excluding a single application discontinued shortly before publication date cannot be justified. This is something which an applicant has to accept in each individual case, especially as he can rely on the guarantee that at all events an application withdrawn by the above mentioned key date will not be published. There is no EPC provision which might give rise to the conclusion that an applicant has full power over the application's publication until expiry of the 18-month period. The appellant's claim, that absolute confidentiality prevails until that time and excludes subsequent publication, finds no support in the Convention. The EPC provision governing the confidentiality of an application, Article 128 (Inspection of files), establishes that confidential treatment ceases on publication of the application, not on expiry of the 18-month period.

5. Neither is the appellant's claim supported by the general considerations he presents. As far as the divulging of technical knowledge without compensation is concerned, it is correct that Article 67 EPC attaches provisional protection to publication under Article 93 EPC, though only under certain conditions. However, under Article 67(4) EPC, even protection obtained becomes retroactively ineffective if the European patent is not granted. All patent grant procedures which publish applications prior to grant thus carry the risk of publication taking place even though grant does not. This is a risk which an applicant accepts when entering on such patent grant procedures.

6. The appellant's argument based on Article 4 C(4) of the Paris Convention is also inapplicable. In Decision J 15/80 (OJ EPO 1981, 213, 216), the Legal Board of Appeal ruled that the EPO is not directly bound by Article 4 of the Paris convention. Regardless of that ruling, the provision mentioned applies only to so-called "second Offices". It obliges them to recognise priority if a previous application filed with a so-called "first Office" has been withdrawn unpublished and a subsequent application with the same content has been filed. The Paris Convention does not oblige "first Offices" to allow 18 months for such a situation to come into being.

7. Finally, the Board of Appeal is also unable to agree with the appellant's contention that Rule 48(1) EPC is in "conflict" with the Convention under the terms of Article 164(2) EPC. The theoretical possibility that the President of the EPO might abuse a power does not invalidate the implementing provision which grants him that power.

8. To sum up, the key date specifiable pursuant to Rule 48(1) EPC can therefore be said to give the applicant a certain minimum period of time within which his withdrawal of the application also prevents its publication. If the application is not withdrawn until after the key date, the applicant can no longer rely on its not being published. Nevertheless, the EPO is allowed by law to prevent publication, at its own discretion. Discretion does not mean taking an arbitrary decision, but allowing the decision to be guided according to whether it seems justifiable for the Office to intervene in the light of the stage which the publication process has reached.

9. The sole reason given by the Receiving Section for its refusal to prevent publication was its statement that it is obliged to publish by law. However, since no such obligation can be inferred from Rule 48 EPC and since the Receiving Section did not say whether it would still have been possible to prevent publication in this case, the decision appealed has to be set aside.

10. For an appeal fee to be reimbursed pursuant to Rule 67 EPC there has to have been a substantial procedural violation. Such a violation is evident in the Receiving Section's failure to take account of the appeal's suspensive effect as laid down in EPC Article 106(1), 2nd sentence. If it considered that the only factors preventing it from stopping publication were legal ones and not the actual circumstances prevailing, which went unmentioned, it should have postponed publication until the appeal decision. Reimbursement is also equitable. It is not to be ruled out absolutely that the publication was still preventable. In that case the appellant would in the end also have achieved the prevention of the publication by his appeal. The appellant also deserves credit for subsequently taking the trouble to have the points of law clarified, in spite of the fact that his application was published. The conditions for reimbursement of the appeal fee are therefore fulfilled.

11. The appellant requested a referral to the Enlarged Board of Appeal to deal with the legal question of whether the applicant's full right of disposal until expiry of the 18-month period covers the application's publication as well. This question can be regarded as an important point of law. Consequently, under Article 112(1)(a) EPC the Board of Appeal also has to consider, of its own motion, the question of whether to refer the point to the Enlarged Board of Appeal. However, this step does not seem to be justified, since the question can be answered by reference to the Convention in such a way as to leave the Board in no doubt. Furthermore, the Board is not aware of any legal view points expressed either in national case law or in legal commentaries which might cast doubt on the conclusion reached.