J 0018/84 (Register of European patents - Entries in) 31-07-1986

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The first question - to be examined ex officio - is the respective responsibilities of the Receiving Section and Legal Division and whether each acted correctly.

2.1 Under Article 20 EPC the Legal Division is responsible inter alia "for decisions in respect of entries in the Register of European Patents". Not until the Munich Diplomatic Conference (see Minutes M/PR/II, point 118), was the Legal Division created as a department charged with the procedure (see in particular Articles 15, 20 and 106(1) EPC). The Conference did not however delimit its competence in respect of Register entries, which therefore necessitates interpretation of the Convention.

2.2 Article 127 and Rule 92(1) EPC might seem at first sight to indicate that the Legal Division is responsible for all entries within the meaning of Rule 92(1) EPC. However, its responsibility under Article 20 EPC "for decisions in respect of entries in the Register of European Patents" can in fact relate only to decisions directly concerning the entry itself, i.e. especially those on the registering of transfers under Rule 20 or 61 or of rights under Rules 21 and 22 EPC, for which - as Article 20 EPC makes clear - the Legal Division alone is competent.

2.3 Here a comparison of the Legal Division under Article 20 EPC with the Patent Administration Division under Article 8 of the Community Patent Convention (CPC) is appropriate, particularly as the latter is intended to act as a special department of the EPO under Article 143 EPC, supplementing the Legal Division. Originally, the Patent Administration Division's competence was expressed only in the negative terms of Article 8(1), 1st sentence, CPC, i.e. that it is "responsible for all acts of the European Patent Office relating to Community patents, in so far as these acts are not the responsibility of other departments of the Office". The 1975 Luxembourg Diplomatic Conference on the Community Patent then added a second - positive - clause whereby the Patent Administration Division is "in particular ... responsible for decisions in respect of entries in the Register of Community Patents" (see Records of the Conference, published by the General Secretariat of the Council of the European Communities, 1981, p. 248). Preparatory document Lux/77 (loc. cit., p. 211) states that the purpose of this additional positive clause is that the Division's competence "should be regulated in accordance with the pattern of the European Patent Convention...", a reference to the delimitations of responsibility contained in Articles 18 et seq. EPC (first paragraph of each). The tasks of the Patent Administration Division are also described under "Comments". From this it may be concluded that the intention behind the positively worded 2nd sentence of Article 8(1) CPC ("for decisions in respect of entries in the Register ...") is that the Division should serve in the other departments' stead. It is also worth mentioning that linkage of the EPC's Legal Division and CPC's Patent Administration Division (cf. Article 143(2) EPC) is possible and indeed was considered (cf. Minutes of the 10th meeting of the "Community Patent" Working Party, R/3282/73 (ECO 346, BC 28) of 8 February 1974).

2.4 The Legal Division's competence under Article 20 EPC as a "department charged with the procedure" within the meaning of Article 15 EPC certainly extends to the application of Rules 20, 21, 22 and 61 EPC. It does not however relate to all entries, but only to "decisions in respect of entries", i.e. decisions by which a party is or might be "adversely affected" within the meaning of Article 107, 1st sentence, EPC. The same conclusion may be drawn from the decisions taken at the Munich Diplomatic Conference, which not only established the Legal Division (Article 20 EPC) as a "department charged with the procedure" (Article 15 EPC) but also included it in other provisions of the Convention, initially and particularly in its Article 106(1). It is apparent from Articles 21(1) and (2) and 23(2) EPC that the Legal Division was conceived as a preliminary instance to the Legal Board of Appeal. This is borne out by the "proceedings before ... the Legal Division" for which Article 117(1) EPC provides and which may involve inter alia oral proceedings (Article 116 EPC) and taking of evidence (Article 117 EPC). The Legal Division may not take decisions without giving the parties an opportunity to present their comments (Article 113 EPC), and these decisions must comply with Rule 68 EPC.

2.5 It follows from all this that the Legal Division is not responsible under Article 20 for routine requests for entries where there is no difference of opinion between a party and the EPO. The President of the EPO is free to decide, as part of his administrative competence under Article 10(2)(a) and Rule 9(2) EPC, which department is responsible for handling entry requests which cannot adversely affect a party within the meaning of Article 107 EPC. Those involving differences of opinion not immediately resolvable, however, must be submitted to the Legal Division once the need arises for proceedings of the kind mentioned in point 2.4 above and which might involve an appealable decision.

2.6 The present case should thus have been referred to the Legal Division upon receipt of the letter of 29 October 1982 making it clear that the appellant did not agree to the transfer. The transfer nonetheless effected by the Receiving Section is therefore to be set aside as in breach of Article 20 EPC.

2.7 This procedural error is also clear from the fact that the appellant was replaced as applicant by the respondents against his will. Any such change must be preceded by an appealable decision, which itself cannot be implemented until it has become final and upon which any appeal has suspensive effect (Article 106(1), 2nd sentence, EPC). In the present case this would have meant that pending the Board of Appeal's decision the appellant would have remained the entitled applicant under Article 60(3) EPC with whom the proceedings were to be conducted, unless they were suspended or interrupted under Rule 13 or Rule 90 EPC respectively. The Legal Division should have regularised the procedural position. At the same time it could have issued an appealable decision that (in its opinion) the respondents should be recorded as applicants. However, the appeal's suspensive effect would have meant the appellant provisionally remaining the recorded applicant and thus entitled under Article 60(3) EPC to prosecute the application.

2.8 In view of these procedural errors the decisions of the Receiving Section and Legal Division are to be set aside, and the appeal fee refunded under Rule 67. The fact that the appeal is allowed only in part is no impediment to such refund.

3. Under Article 111(1), 2nd sentence, EPC, the Board can now either refer the case back to the Legal Division or take a decision itself. It opts for the latter course because the application of Rule 20 EPC raises wider problems of law.

4. The parties were clearly uncertain as to the requirements under Rule 20 EPC for registering a transfer, and no doubt the differences between European (Rule 20 EPC) and German law (30(3) of the German Patent Law) contributed to this uncertainty. Under German law evidence of transfer must be supplied in the form of a certified declaration by the transferor that he consents to the assignment, and a declaration by the transferee that he accepts it (cf. 30(3) of the German Patent Law and guidelines on assignment published in the "Blatt für Patent-, Muster- und Zeichenwesen" (Bulletin for Patents, Utility Models and Marks), 1981, p. 232 et seq.). European law on the other hand stipulates the filing of an "instrument of transfer" within the meaning of Rule 20(1) EPC, for which purpose an extract will suffice. This difference between German and European law is deliberate. The Chairman of the EC Working Party on Patents originally proposed the German system of "consent to assignment" (cf. proposals of 3 March 1961 for an Article 23), but the Working Party opted instead for an "agreement registration" system (EEC 3076/IV/62 of 22 May 1962, p. 42). The difference was perceived to be precisely that with the "consent to assignment" system no entry can be made without the consent of one of the parties, whereas that of "agreement registration" no longer requires evidence of that consent other than the agreement concluded (loc. cit., p. 44).

5. It is clear from the above that the decision on the main request (dismissal of the appeal/upholding of the registration of the respondents) or the alternative request (joint registration of all parties) depends only on whether the documents submitted as the "instrument of transfer" meet the formal requirements of Rule 20 EPC, in which connection it may be assumed - given the reference to Article 72 in Rule 20(2), 2nd sentence, EPC - that not only the "assignment" ("rechtsgeschäftliche Übertragung" - "cession") within the meaning of Article 72 EPC but also the "instrument of transfer" ("Übertragungsvertrag" - "acte de transfert") within the meaning of Rule 20 EPC "shall be made in writing and shall require the signature of the parties to the contract".

5.1 Even in conjunction with the "declaration of acceptance" the "declaration of transfer" fails to meet this requirement. Assuming that an exchnge of written declarations could fulfil the requirement that the "instrument of transfer" within the meaning of Rule 20 EPC be in writing, two separate declarations even if both are in writing and signed still do not constitute an agreement unless each has been sent to the other party. With the "declaration of acceptance" this is not the case: it was addressed and sent to the EPO alone. During the subsequent proceedings (after registration of the transfer) it did become known to the appellant's representative, and perhaps even to the appellant himself. However, even if it is held to constitute acceptance of the agreement and not merely a declaration addressed to the EPO, by the time it was received the appellant was no longer bound by the offer made with his "declaration of transfer". He and his representative had in the meantime made it quite clear in writing and by their behaviour that the appellant no longer considered himself party to that offer.

5.2 The appellant's request that the contested decision be set aside is thus justified by the substantive considerations set out under point 5.1 above and not simply for the procedural reasons given in point 2.6. The respondents' main request that the appeal be dismissed and the existing entry confirmed cannot therefore be granted.

5.3 However, nor can the Board grant the appellant's further request that he be reinstated as sole applicant, because it must allow the respondents' alternative request that all the parties be recorded as joint applicants. This request is supported by their joint declaration (cf. point III.1 above), which in form and content constitutes an "instrument of transfer" within the meaning of Rule 20(1) EPC, notwithstanding the NCR paper used to produce it. If several copies of a single agreement are produced simultaneously using such paper each copy is an "original" within the meaning of Rule 20(1) EPC. An NCR signature is an original signature; it is produced by the hand's pressure in signing. The declaration's effective date within the meaning of Rule 20(3) EPC is that of its receipt (cf. point 7 below). This means that the procedural acts performed during the examination proceedings by the professional representative appointed by all the parties as their common representative (cf. III.4 above) become effective with the present decision, and that the examination proceedings can be resumed with a communication under Rule 51(4) EPC.

6. The Board can accede to the request of the respondents' representative that his clients be added to the existing designation of inventor; the requirements under Rule 19 EPC are met, and the Board is also competent to order this correction.

6.1 The joint submission of 15 June 1982 by all the parties (cf. point II above) created the preconditions for a correction under Rule 19 EPC. Nor is this in dispute, as was established in the oral proceedings.

6.2 The Board's competence to order the correction derives under Article 111(1), 2nd sentence, EPC from that of the Legal Division, which because the matters are related is itself competent to decide on whether to register applicants who also seek to be recorded as inventors.

6.3 The Legal Division is anyway competent also for decisions applying Rule 19 EPC. The comments made above (cf. point 2.4) about decisions applying Rule 20 EPC apply mutatis mutandis, although here again routine corrections involving no dispute are a matter for the departments to which the President of the EPO allocates this task. A further point to note is that Rule 19 EPC continues to apply even after the opposition phase, whereas under Rule 61 Rule 20 EPC does not.

:6.4 The respective areas of responsibility of Receiving Section and :6.4 The respective areas of responsibility of Receiving Section and Legal Division in matters of designation of inventor do however require delimitation, particularly as the Legal Board of Appeal has already addressed this question (J 08/82, OJ 4/1984, p. 155 et seq., Reasons for the Decision, point 2). The examination of an initial designation of inventor complying with Article 81 EPC falls exclusively to the Receiving Section as one of its formalities examination responsibilities under Articles 16 and 91 EPC. However, once entries begin in the Register of European Patents - which under Article 127, 2nd sentence, EPC coincides with publication of the European patent application - the Legal Division may be competent for disputed corrections.

7. The respondents request that a fee under Rule 20(2) EPC for registering a transfer be refunded. They have filed three requests for entry altogether and paid a fee twice. The first fee payment was made on 13 June 1982 at the rate of DM 115 then in force (cf. point II above), and the respondents' representative availed himself of it (cf. point III.2 above) for his request of 7 September 1982 (which was the same as his alternative request now granted) that all three parties be recorded. No fee was paid in respect of the request of 5 October 1982 (cf. point V above) that only the respondents, and not the appellant, be recorded (which was the same as his main request now refused). It may be assumed that Receiving Section and Legal Division allowed the fee paid for the first request to cover the second as well. They acted correctly, for at that time the requests were not qualified as main and alternative ones. During the proceedings however it became clear that the earlier request was the second-best and the later one the preferred solution. In the rare event of a request within the meaning of Rule 20(2) EPC comprising a preferred and an alternative request, a single fee suffices. In allowing the respondents' alternative request the Board of Appeal is acting on the request of 7 September 1982 (cf. point III.2 above) effective within the meaning of Rule 20(3) EPC. The fee of DM 125 paid as a precautionary measure in the oral proceedings in respect of the renewed request is therefore to be refunded.

8. On 13 July 1982 further payments of DM 115 and DM 30 were made (cf. point II above). However, they have no purpose within the meaning of Article 7 of the Rules relating to Fees, and are therefore unused and to be refunded.