J 0038/97 (Competence of DG2 director to decide on inspection of file) 22-06-1999

1. Both the notice and the grounds of appeal were filed and the appeal fee was paid within due time. The notice of appeal meets the requirements of Rule 64 EPC. Moreover it has been filed by the party affected by the impugned decision.

2. Jurisdiction to decide on a request for inspection of file under Article 128 EPC lies with the Receiving Section, the Examining Division or the Opposition Division as far as they are competent to decide on a patent application or the maintenance or revocation of a patent. The competence in each case depends on where the case is pending. Pursuant to Rule 9(3) EPC the Vice-President of EPO DG2 has entrusted this duty normally within the responsibility of the Examining Division to formality officers (OJ 1984, 317, revised and supplemented in OJ 1989, 178). However, this transfer of duties does not change the character of the decision. The decision to be taken by the Formalities Officer on matters mentioned in this Notice, like inspection of file under Article 128 EPC are appealable decisions according to Article 106(1) EPC. The Formalities Officer acts as a representative of the Division.

3. Inspection of file of a technical opinion under Article 25 EPC given by the Examining Division is not covered by the wording of Article 128 EPC which only concerns patent files and patent application files. Nevertheless there is no reason to assume that the Examining Division is not competent to decide such cases. The competence to decide on inspection of file under the EPC derives - as pointed out above - in any case from the competence of the respective department to decide on patent applications or patents.

4. In the case under appeal only the Examining Division charged with the technical opinion or the Formalities Officer pursuant to the cited Notice of the DG2 Vice-President (see OJ 1984, 317) had the competence to decide on the request for inspection of file. The decision under appeal does not meet this requirement, since it was taken by the director of Directorate 2116. This person is not entitled under the EPC to take any decision on inspection of file as requested by the Appellant. His decision is therefore void ab initio (T 0382/92).

5. Not lying from one of the departments exhaustively enumerated in Article 106(1) EPC the appeal is inadmissible. Although the appeal is inadmissible reimbursement of the appeal fee has to be ordered.

5.1. Rule 67 EPC on reimbursement of appeal fees is not applicable since in this case the requirements of this provision are not met. There is neither the event of interlocutory revision nor the Board of Appeal deems an appeal to be allowable.

5.2. However, in the particular circumstances of the present case, the board is of the opinion that the question of reimbursement of the appeal fee has to be examined on the basis of equity which guarantees any party a right to a fair procedure. This principle includes the obligation of the EPO to handle requests relating to inspection of files in accordance with the procedures laid down in the EPO with due care. That means that decisions on inspection of files must be taken by the departments or persons legally entitled by the EPC to do so.

5.3. In the view of the Board, Article 25 and Article 128 EPC create a legitimate expectation of any person that a decision on inspection of file concerning a technical opinion would be taken by the competent Examining Division and would consequently be appealable pursuant Article 106(1) EPC. The EPO clearly offended against this legitimate expectation in the present case. After having requested an appealable decision the appellant could legitimately expect that the decision under attack was given by the competent department and not by a person lacking legal authority. In conformity with the principles of good-faith governing the relations between the EPO and the applicants of European patents (see Enlarged Board G 5, G 7, G 8/88, OJ 1991, 137 (point 3.2. of Reasons); J 2/87, OJ 1988, 330; J xxx/87, OJ 1988 323; J 10/84, OJ 1985, 71; J 3/87, OJ 1989, 3, J 1/89, OJ 1992, 17; J 13/90, OJ 1994, 456; J 30/94)) it is equitable in these circumstances to order the reimbursement of the appeal fee.

6. Normally lack of jurisdiction is a procedural deficiency that requires remittal of the case to the competent instance. However, in this case the technical opinion requested by the Dutch Court was in fact never given by the Examining Division. Thus, no purpose is served in remitting the case.