J 0002/93 (Decisions subject to appeal) 07-02-1994

I. In a decision dated 25 November 1991 Board of Appeal 3.5.2 revoked the appellants' European patent No. 0 098 239 (T 456/90, not published).

II. Believing themselves entitled to a re-establishment of their right to see proceedings continued on the basis of amended claims, on 16 January 1992 the appellants filed an "application for restitutio in integrum" before the boards of appeal. On the same date they also filed a "notice of appeal" against the aforementioned decision.

III. In a letter dated 31 July 1992 the chairman of Board of Appeal 3.5.2, responsible for the administration of that board, wrote to the appellants' professional representative informing him that the application for re-establishment of rights would not give rise to any action by the board. In a subsequent letter dated 28 September 1992 the Vice-President of Directorate-General 3 informed the same representative that there was no possibility of the final decision of Board 3.5.2 being reviewed.

IV. Referring to the requests in the above letters, the appellants' professional representative wrote a letter dated 27 October 1992 to the European Patent Office, Attn. Mrs R. R., Vice-President Directorate-General 5, pointing out that the appeal fee and the fee for the application for re-establishment of rights had been refunded and that the boards of appeal considered the requests to be non-existent. He requested a meeting with the Vice- President to discuss the various possibilities open to the legal division, since the appellants felt that they were entitled to request that the date of receipt of the application for re-estab- lishment of rights be entered in the Register of European Patents and that the entry in the same that the proceedings had been terminated by decision T 456/90 of 25 November 1991 be deleted. In her letter dated 4 November 1992 the Vice-President of Director- ate-General 5 replied to the representative that no department of the European Patent Office was competent to render a decision which could be understood as calling into question the result of the appeal proceedings and that the legal division was therefore prevented from acting because it lacked the necessary competence.

On 11 November 1992 the professional representative notified the Vice-President that he was submitting the appellants' requests to the legal division.

On the same date the appellants' professional representative filed the two requests with the legal division.

In a letter dated 25 November 1992 the Vice-President of Director- ate-General 5, referring to the representative's letter of 11 November 1992, reminded him of her first reply of 4 November, pointing out again that, with regard in particular to the first of the appellants' requests, there were no provisions in the European Patent Convention which provided any of the instances of the European Patent Office with the competence to make decisions or entries after a patent had been revoked (by a board of appeal) and that therefore there was no longer any competence of the legal division to take a decision.

V. On 27 January 1993 the appellants filed an appeal against "the decision of the legal division of the European Patent Office of 25 November 1992", requesting that:

- The decision of the legal division of the European Patent Office dated 25 November 1992 be cancelled.

- It be ordered that the date of receipt of the application by ETA S.A. of 16 January 1992 for re-establishment of rights be entered in the Register of European Patents.

- The matter hence be referred back to the EPO's legal division so that the date of receipt of the application by ETA S.A. for re- establishment of rights could be entered.

- It be ordered that ETA S.A., by virtue of Rule 67 of the Imple- menting Regulations to the EPC, be reimbursed the fee paid by them during the filing of the appeal.

A statement of grounds was filed on the same date and the appeal fee paid.

With regard to admissibility, the statement of grounds claimed that the letter of 25 November 1992 constituted a decision by the legal division as its contents bore all the characteristics of a decision. Furthermore, it had been sent by Mrs R. R., Vice-Presi- dent of the legal division, who, in the appellants' view, was empowered to take decisions on behalf of the legal division.

VI. In a letter dated 2 March 1993 and signed by Mrs L.D. Ö, Director, the legal division wrote to the Chairman of the Legal Board of Appeal as follows: "Please find enclosed an appeal filed by ETA S.A. Fabriques d'Ebauches following the letter that Mrs R. sent to the above-mentioned company on 25 November 1992. There has been no interlocutory revision".

VII. In a communication dated 25 June 1993 the rapporteur informed the appellants' representative that the letter of 25 November 1992 - the subject-matter of the appeal - might not be viewed as con- stituting a decision by the legal division subject to appeal under Article 106(1) EPC and that the appeal might therefore be inad- missible.

VIII. In a telefax dated 25 August 1993 the appellants argued as follows:

- Whether a document emanating from the EPO constituted a decision or a communication depended on the substance of its contents, not on its form.

- The legal division was grouped together administratively with other services in Directorate-General 5, which was headed by Mrs R. R., Vice-President of the EPO, the latter thus being the direct superior of Mrs L.D. Ö, the Director of the legal division. The fact that a person performed administrative duties as Vice- President of a Directorate-General did not exclude this same person from also being a member of an instance of this Director- ate-General with the authority to take decisions or to participate in the decision-making process. As a lawyer Mrs R. R. was qual- ified to take a decision as a legally qualified member of the legal division.

- It was clear from the exchange of letters that Directorate- General 5 had stepped in on behalf of the legal division, ruling in its stead on ETA S.A.'s entry request. This was confirmed by the legal division's subsequent actions in taking the same line on ETA S.A.'s request of 11 November 1992 and treating Directorate- General 5's letter of 25 November 1992 as "the equivalent of a proper decision, applying the procedure under Article 109 EPC".

- To rule that the appeal was inadmissible on the grounds that it did not relate to a decision emanating from the legal division proper - and one by which it would be bound - would run counter to the principle generally accepted in the contracting states and recognised by established EPO board of appeal case law that the administration must act in good faith.

- The board of appeal could not sanction a procedure that allowed the hierarchically superior authority (in purely administrative terms) to rule in place of the inferior authority, without the possibility of appeal, because only the lower authority was com- petent to rule on the merits (Article 20 EPC).

- Nowhere did the EPC empower Directorate-General 5, which was only an administrative entity, to intervene and rule that the legal division had no competence to issue a decision. The fact that Directorate-General 5 had exceeded its rights did not however render this appeal inadmissible as the refusal to allow the requests filed by ETA S.A. constituted a final decision which was binding on the legal division.

IX. On 17 September 1993 the appellants wrote to the President of the EPO asking him to state his position by submitting observa- tions to the Legal Board of Appeal. In his letter of 29 September 1993 the President of the EPO, referring to Article 12a of the Rules of Procedure of the Boards of Appeal - under which a board may, at the reasoned request of the President, invite him to present his comments - replied that he saw no justification for such a request in this particular case.

X. On 19 January 1994 the appellants submitted an analysis of the principles generally recognised by various contracting states with regard to appeals against failure or refusal to issue a decision.

XI. Oral proceedings were held on 7 February 1994, during which the appellants filed the following subsidiary requests:

1. That, in the event of the board of appeal finding that an appealable decision had not been issued, it be found that it was for the legal division to rule on the request of ETA S.A. Fabriques d'Ebauches dated 11 November 1992 that the date of receipt of their application for re-establishment of rights be entered in the Register of European Patents.

2. That the following points of law be referred to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC:

(a) When an authority hierarchically superior to the competent department at the Office rules in that department's stead, does the decision of this authority have to be treated in the same way as a decision issued by the competent body?

(b) Under what conditions can the refusal or failure to issue a decision by a competent department of first instance of the Office be treated in the same way as a decision subject to appeal?

(c) Can an authority or an individual employee of the Office take an interlocutory decision on the admissibility or existence of proceedings which are the exclusive preserve of another department of the Office?

XII. The decision set out in the Order below was handed down at the close of oral proceedings.