J 0014/90 (Denmark - tacit) 21-03-1991

1. This appeal case is the first in which the Legal Board of Appeal has invoked Article 12a of the Rules of Procedure of the Boards of Appeal, under which it may invite the President of the European Patent Office to comment on questions of general interest arising in the course of proceedings pending before it. The Board therefore feels this is a good opportunity to set out the following observations.

1.1 Article 12a was inserted into the Rules of Procedure of the Boards of Appeal by a decision of the Administrative Council of the European Patent Organisation of 7 July 1989 (OJ EPO 1989, 361) and reads as follows:

"The Board may, on its own initiative or at the written, reasoned request of the President of the European Patent Office, invite him to comment in writing or orally on questions of general interest which arise in the course of proceedings pending before it. The parties shall be entitled to submit their observations on the President's comments."

In the preparatory document of the Administrative Council the considerations giving rise to this amendment were explained as being that in matters of general importance, landmark decisions might be given a broader basis if the President of the EPO were able to point out circumstances relevant from his point of view. In many Contracting States the national patent office was either a party to appeal proceedings or was heard by the second instance.

1.2 This being the first time that this article was to be invoked, the Legal Board of Appeal discussed the procedure to be adopted. Its conclusion, which is in no way binding on other Boards, was that Article 12a of the Rules of Procedure of the Boards of Appeal supplements Articles 114(1) and 117(1)(b) EPC. The invitation to the President of the EPO to comment in writing and/or orally presupposes that "questions of general interest" have been raised. However, this does not require the Board of Appeal issuing the invitation to define and formulate these questions in detail. The Board need not hear the appellants or other parties to the proceedings before deciding to issue an invitation to the President. The invitation is made by the Board direct to the President as it falls within the judicial function of the Board. The staff member appointed by the President to represent him is not as a rule required to furnish any form of authorisation. The President is not a "party to the proceedings" within the meaning of Article 107 EPC and therefore has no right to submit requests, although this does not rule out his making suggestions. As Article 12a, second sentence, of the Rules of Procedure expressly states, parties to the proceedings are entitled to submit their observations on the President's comments, i.e. even where this would not be necessary to maintain their right to be heard under Article 113(1) EPC. The Convention does not itself contain any legal basis for the sharing of costs, although it might be possible, by applying Article 125 EPC, to establish such a basis by derivation from national procedural law. In such a case the principles of causality and equity would both be key criteria.

2. The appellants request that the European patent application be accorded the filing date of 1 January 1990.

2.1 The Board is unable to agree with the applicants' submission that their request may be granted on the grounds that it was already apparent from the circumstances prevailing on the date of filing that they wished to designate Denmark. The number of European patent applications received by the EPO in December 1989 was 4 243. In the Office's experience around half of them will have had time limits for claiming priority which did not expire until after 1 January 1990. As it was known that the European Patent Convention would enter into force for Denmark on 1 January 1990, it can likewise be assumed that, where the time limit for claiming priority would allow, applicants intending to designate Denmark would have delayed filing their European patent applications accordingly. It is normal for applicants not to designate all the Contracting States, hence a weighing-up of all the known circumstances prevailing on 21 December 1989 would not have led the Receiving Section to conclude that the applicants did not want to have this day as the date of filing, but 1 January 1990 instead (distinguished from the decision delivered in J 18/90).

2.2 Not until the designation fee for Denmark was paid on 12 January 1990 did it emerge that the applicants would accept, indeed were actively seeking, a re-dating of their application to 1 January 1990. It is possible for an application to be re-dated to a later date, as is shown by unpublished decision J 5/89 of 9 July 1989 (Reasons 5 to 7). Provisions to such an effect are contained in Article 91(6) EPC in respect of subsequently filed drawings, in Rule 20.2 PCT with regard to various papers pertaining to an application, as well as in Article 8 of the draft of a "Patent Law Treaty" (Doc. WIPO, PLT/DC/3 of 21 December 1990). Also of relevance in this respect is Article 58 of the Swiss Patent Law, which permits a re-dating of an application. Such a re-dating must however have some legal basis or have been sanctioned by rulings on individual cases, as in J 5/89 above. In that case, changing the date of filing from 25 August 1986, the date on which the application was validly filed in Swedish, to 6 November 1987, the day on which the same application was filed in English, was the only way to prevent a complete loss of rights which, given the particular circumstances of the case, would have been unfair.

2.3 In the present case, therefore, the Board of Appeal has no legal basis for re-dating the application to a later date. The designation of a state forms part of the request for grant of a patent, and hence belongs to the documents making up a patent application, which means that in principle there is no reason why the filing date of an application should not be changed to the date on which a further state is designated. What is lacking are the necessary legislative provisions of the kind described above which would make this possible. Nor are there special circumstances, as was the case with decision J 5/89. On the contrary: the public interest and the need for consistency rule out a re-dating in this case.

The territorial scope of the European Patent Convention can be extended, but this also has an effect on the interests of an applicant's competitors. Prior to any given qualifying date there are always any number of patent applications which could be re- dated to that qualifying date at no detriment to, indeed to the advantage of, the applicant. Were this to be allowed many requests for re-dating would be filed over a period of months, thereby subsequently extending the scope of the protection afforded. This is at variance with the need for consistency, and is incompatible with legal certainty and the public interest.

2.4 Finally, one way of granting the applicants' request might be to consider the application and the designation of Denmark expressly requested in the letter received on 12 January 1990 as a new European patent application designating Denmark. It would have been possible to re-file the application between 1 January 1990 and 28 January 1990, the date on which the time limit for claiming priority expired; this would merely have been a question of fees. That did not happen, however. Nor was any such request made. Nor can the application of 21 December 1989 together with the letter received on 12 January 1990 now be considered as a new application. Although this letter does represent a legal declaration, and is hence open to interpretation, to construe it together with the existing application as a new patent application would be beyond the bounds of reasonable interpretation in the first place because this was clearly not the true intention of the applicants. There is therefore no need to consider whether other reasons can be found for not viewing this letter as a new patent application.