J 0014/87 (Mention of grant of patent) 20-05-1987

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

2. Article 129(a) EPC requires the EPO periodically to publish a European Patent Bulletin containing entries made in the Register of European Patents, "as well as other particulars the publication of which is prescribed by this Convention". One such is the mention of grant - cf. Article 97(4) EPC, which also stipulates that the mention must be published at least three months after the start of the time limit for paying the fees for grant and printing.

3. Under Article 97(4) EPC the decision to grant does not take effect until the date on which the European Patent Bulletin mentions the grant, so clearly this mention is of fundamental importance. Furthermore, Article 64(1) EPC stipulates that only after that date does the European patent confer on its proprietor, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State (subject however in certain cases to compliance with the provisions of Article 65 EPC regarding translation of the specification). Lastly, publication of the mention of grant also triggers the nine-month opposition period under Article 99 EPC.

4. The appellants rightly state that the EPC nowhere specifies the requirements as to form and content of the mention of grant published in the European Patent Bulletin. This is thus a matter of EPO administrative practice.

5. Established practice is that the European Patent Bulletin comprises two main parts, Part I giving details of published applications and Part II of granted patents. Both have a number of sections and sub-sections giving various particulars in a set order. Sections I.1 and II.1 list applications and patents respectively in terms of their International Patent Classification and - unlike subsequent sections, which list under various headings only a few details such as publication No., date of filing, name of applicant or patentee - give all the particulars of the applications and patents listed in that particular issue of the Bulletin.

6. In the case under consideration the application was published in European Patent Bulletin No. 83/49 of 7 December 1983, in full accord with the practice described in point 5 above. Section I.1 contains all the usual particulars, including the filing and priority dates and the title of the invention. However, as mentioned in point II above the mention of grant published in Bulletin No. 86/14 of 2 April 1986 is incomplete in that it lacks the particulars that should be given under Section II.1, obviously due to an oversight during printing.

7. This is without doubt a serious omission, and raises the question of whether the mention of grant of the European patent concerned as it appeared in the European Patent Bulletin in fact meets the requirements for it to take effect under Article 97(4) EPC and under Article 64(1) EPC confer on its proprietor the same rights as would a national patent. It is therefore understandable that the Formalities Section sought to put matters right when the error was made known.

8. The first question arising in considering what the appropriate procedure would have been in this situation is what purpose the mention of grant published in the Bulletin actually fulfils. Apart from fixing the date on which the patent begins to have legal force in the designated Contracting States, and thus ending the provisional protection under Article 67, its chief purpose is to provide the public - especially a patentee's competitors with the information enabling them to decide within the nine- month period allowed by Article 99 EPC whether to oppose the European patent that has been granted. The appellants rightly argue in this connection that no sensible opponent would base this decision solely on the particulars published in the European Patent Bulletin but instead would normally first examine carefully the scope of protection conferred. This however can only be done satisfactorily on the basis of the patent specification, which Article 98 EPC requires the EPO to publish at the same time as the mention of grant. The latter's main purpose therefore is to make known the fact that a patent has been granted. This may, depending on the circumstances, prompt interested parties to study the specification carefully in order to find specific grounds on which to oppose it.

9. In the present case failure to print any particulars in Section II.1 of the Bulletin undoubtedly impeded a clear ascertaining of facts to a more than normal degree and it is not impossible that the omission may have caused certain interested parties to pay the grant of this patent less than their usual attention. Since, however, those concerned normally keep a fairly close check on European applications and patents published, the Board feels it safe to assume that the great majority would have seen the further particulars given in the other sections and that the information given in Sections II.2 to II.4 of European Patent Bulletin No. 86/14, namely the listing by International Patent Classification with correct application and publication Nos. and the patentee's name, are sufficient for the main purpose of the mention of grant defined above. If moreover one of them failed to oppose the patent within the period allowed by Article 99 EPC because of a failure to notice the mention of its grant he would still be left with the possibility of revocation proceedings under the laws of the designated Contracting States (cf. Article 138 EPC).

10. In these circumstances, and because the patentees have a legitimate interest in not foregoing rights on which they should be able to rely, the Board rules that the mention of the grant of the European patent in suit in European Patent Bulletin No. 86/14 of 2 April 1986 fulfils the requirements of Article 97(4) EPC, and that the decision to grant the European patent of 20 February 1986 therefore took effect on that date. The Head of Formalities' action in declaring that mention null and void thus clearly went too far and cannot be upheld. The same goes for the subsequent new decision to grant and publication of a new mention of the grant. In the Board's view all that was necessary was to publish a correction in Section II.12 of a later issue of the Bulletin giving the particulars originally omitted from Section II.1.

11. To prevent any misunderstanding the Board would emphasise that its conclusion in this case in no way implies that the EPO should change its existing practice in the matter of publication, whose purpose of providing the public with clear and comprehensive information it fully endorses. The practice, moreover, would seem excellently designed to fulfil that objective. There is thus no cause for the EPO to change its tried and tested practice. However it is quite possible to conceive of circumstances - were the EPO for example to publish obviously misleading information on salient points - in which publication of the mention of grant might be so flawed as to be invalid, in which case it would have to be repeated. Each case must therefore be judged on its substantive merits.

12. Given the Board's ruling in point 10 above that 2 April 1986 is to be regarded as the correct date of publication of the mention of grant, the obligation to pay renewal fees to the EPO ended before the fourth-year fee fell due on 31 May 1986 (Article 86 and Rule 37 EPC). The fee plus additional fee paid for that year must therefore be refunded, as the appellants have requested.

13. Neither the EPC nor any other legal text empowers the Board of Appeal to consider claims against the EPO for compensation in respect of loss or damage allegedly sustained in the course of European patent grant proceedings (cf. Article 9 EPC). The Board therefore dismisses the appellants' request for reimbursement of additional costs resulting from the two mentions of grant without being in any way able to pronounce on its legal merits.