T 0713/02 (Phosphoramidites/AVECIA) 12-04-2005

1. The appeal is admissible.

2. Priority right

In the decision under appeal the novelty objection was based on document (1). That document was published before the sole priority date originally claimed in the present application, i.e. 9 May 1996, but was published after 6 October 1995, which date the Appellant later requested to be added as a further priority date by way of correction pursuant to Rule 88 EPC. That correction is under dispute with the consequence that its validity needs to be examined before establishing whether or not document (1) qualifies as prior art pursuant to Article 54(2) EPC.

2.1 Jurisdiction of the Board

After the Formalities Officer had informed the Appellant-Applicant in writing that the request for correction had been allowed, the Examining Division, in the decision under appeal, held to the contrary. That finding has been challenged by the Appellant inter alia on the ground that the Examining Division had no authority to overturn what, according to him, constituted a binding decision made by a competent Officer of the EPO empowered to decide that matter on behalf of the Examining Division (see point IV supra).

2.1.1 Under Article 111(1), second sentence, first alternative, EPC the Board of Appeal may indeed exercise any power within the competence of the department which was responsible for the decision under appeal. This includes Formalities Officers acting on behalf of the Examining Division under Rule 9(3) EPC. As regards the examination of whether the appeal is allowable (Article 110(1) EPC), in ex parte proceedings the Boards of Appeal are restricted neither to examining the grounds for the contested decision nor to the facts and evidence on which the decision is based. This applies also to patentability requirements which the Examination Division indicated in a communication or in a decision to refuse the application as having been met (see decision G 10/93, OJ EPO 1995, 172, point 3 of the reasons), and all the more to those requirements which were found not to have been met. Excluded from review by the Boards of Appeal is only matter which qualifies as res judicata, i.e. issues not or no longer appealable because subject of another decision that has become final.

2.1.2 This raises the question of the legal nature of the official letter of the Formalities Officer annexed to the "Brief Communication" dated 18 April 2001 (see point III above), which letter started with the statement: "In the matter of Application No. 96933245.1, it is decided as follows: The request to add the priority of US 08/539,939 (filed on 6 October, 1995) is allowed", followed by a short reasoning and ending with the sentence "Hence, the priority date will be changed to 6 October, 1995".

2.1.3 If that letter of the Formalities Officer constituted a(n interlocutory) decision within the meaning of Article 106 EPC it would be final and binding on the department of the EPO which issued it (see e.g. decision T 222/85, OJ EPO 1988, 128, point 3 of the reasons). Furthermore, in ex-parte proceedings an appeal is indeed not admissible in respect of an administrative decision dealing with a request of the sole party to the proceedings and fully allowing it for the reason that the requesting party is not thereby adversely affected. That is the case for any such decision (validly) taken by any department of the EPO entrusted with proceedings under the EPC, including Formalities Officers acting on behalf of an Examining Division (Rule 9(3) EPC and Notice of the Vice- President DG2, loc. cit.).

2.1.4 Whether a document issued by the EPO constitutes a decision or a communication depends on the substance of its contents, not on its form (e.g. decision J 8/81, OJ EPO 1982, 10). Hence it is not relevant that the text in question was in the form of a mere letter and sent as an enclosure to a "Brief Communication", nor does it matter, that it stated " ...it is decided" to allow the request. Nor is the fact decisive that the Notice of the Vice-President DG2 cited above uses in point I.23 the wording "Decisions concerning the correction of errors .... (Rule 88 EPC)".

The criterion of substance has to be assessed in its procedural context, in particular by also taking into account the consequences of irreversibly determining the matter at stake - here the addition of an earlier priority - at the given stage of the proceedings, namely in the middle of the substantive examination, and before it had been concluded, as provided for in Article 97 EPC, by a decision to grant a patent or to refuse the application.

This is particularly critical in the present case where the Examining Division had already issued two communications in which both lack of novelty and of inventive step had been found when the Formalities Officer accepted a correction of the priority data by allowing the Appellant to add a further priority with the effect of switching back the earliest priority date from 9 May 1996 to 6 October 1995, thereby interfering with the ongoing substantive examination.

2.1.5 Unlike situations where a total loss of rights is remedied under Articles 121 or 122 EPC, the granting procedure can be carried on perfectly without a final and binding finding that a priority has been validly claimed. Therefore, in the granting procedure, the validity of a priority claim under the EPC is not established by a separate decision even where it is crucial because relevant state of the art emerged during the priority period. There is no sound reason to decide that matter in the applicant's favour in binding form prior to the decision terminating the granting procedure. Similarly, pursuant to Rule 69(2) EPC a "decision shall be given only" if the Office finds against the applicant; if the finding is in his favour he is merely "inform[ed]" about it. It follows from this that there is, in the absence of special circumstances, no need to allow a request for correction of a priority declaration by way of a separate interlocutory decision with immediate final force and effect.

2.1.6 Rather, allowing during ongoing examination proceedings the correction of a priority declaration in the form of a decision that is final would be prejudicial to the outcome of the substantive examination with the possible consequence that the Examining Division is then forced to grant a patent even where it came to light that actually not all requirements of the EPC have been met. Creating such a prejudice by way of a formal decision would, however, be incompatible with the obligation of the Examining Division, in particular under Articles 94(1), 96(2) and 97(1) EPC, and the Formalities Officer acting on its behalf to ensure that no patents are granted which do not meet the requirements of the EPC (see decision G 10/93, loc. cit., point 3 of the reasons).

Moreover, irreversibly allowing such a request for correction would unjustifiably privilege the applicant to the disadvantage of the public and other applicants, whose interests are to be safeguarded as well when correcting priority data late (see point 2.2 below).

2.1.7 Given this, there is no reason to assume that the official letter, in which the Formalities Officer stated that the requested correction was allowed, constituted a formal (interlocutory) decision; nor does this statement for objective reasons qualify as such a decision whose content - the addition of a further priority by way of correction pursuant to Rule 88 EPC - was res judicata; nor is there any basis for construing such an effect on the principle of legitimate expectations or good faith.

2.1.8 It follows from this, that, irrespective of whether the Formalities Officer acted ultra vires (as the Examining Division held) or not, the question of whether in the present case the further priority was validly claimed is open to review by the Board of Appeal exercising the power conferred on it by Article 111(1) EPC.

That being so, the question raised by the Appellant of whether or not the Examining Division can subsequently "overturn a decision" of the Formalities Officer can be left unanswered in the present case.

2.2 Correction of priority

2.2.1 Although Rule 88, first sentence, EPC in cases of an incorrect priority claim allows correction without any time bar, such a correction is at the discretion of the competent authorities of the EPO. The overriding principle in exercising the discretionary power is to balance the interests of the applicant in gaining optimal protection and the interests of the public in respect of legal certainty, in particular that the published application data are accurate and complete (see decisions J 3/91, OJ EPO 1994, 365, point 4 of the reasons; J 14/82, OJ EPO 1983, 121, point 6 of the reasons). Therefore a request for correction of a priority claim by the addition of a priority should be made sufficiently early for a warning to be included in the publication of the application. As an exception to this rule, the correction of priority data, not requested sufficiently early for a warning to be included in the publication of the application, is only allowable if it is justified by special circumstances and the request for correction has been made promptly (see decisions J 6/91, loc. cit., points 3(4) and 5.6 of the reasons; confirmed in J 7/94, loc. cit.). This principle aims at avoiding the unsatisfactory situation where a priority claim comes as a surprise to the public, which is affected by the patent, since the patentability of an invention cannot be evaluated without the relevant state of the art which can only be determined if it is known whether or not a priority is validly claimed. In order to prevent such an impairment, the Boards of Appeal have put particular emphasis on the aspect of legal certainty for the public in cases where a correction of a priority date was not requested sufficiently early for a warning to be included in the publication (see decision J 7/94, loc. cit., points 4 and 6 of the reasons).

2.2.2 In the present case, the application was published on 13 November 1997 claiming exclusively priority from US 08/647354 dated 9 May 1996 without, however, comprising any warning as regards the priority data. In a letter dated 21 December 2000 the Appellant requested correction of the priority data by the addition of a priority claim to US 08/539939 dated 6 October 1995. Thus, the correction of the priority data having not been requested sufficiently early for a warning to be included in the publication of the application, it could only be allowed if it was justified by special circumstances and if the Appellant acted promptly.

2.2.3 With respect to the requirement of promptly requesting correction, it is to be noted that in the present case it took more than three years from the date of publication of the application and multiple office actions before the Appellant requested correction of the priority date which long delay already gives rise to a closer examination of the promptness of the correction. The Examining Division, in its first communication, raised a novelty objection on the basis of document (1) which represented, at that time, state of the art according to Article 54(2) EPC since it was published before the then effective original priority date. This objection was to be expected by the Appellant as the Search Report already qualified this document as category "X", i.e. it was characterised as novelty destroying.

2.2.4 Not later than when confronted with the novelty objection in the first communication, which was based on document (1), the Appellant should have spotted any actual error in the claimed priority date and, if so, he then would have been prompted to immediately request correction of the priority data since a correction would overcome that novelty objection by eliminating the highly relevant document (1) from the state of the art pursuant to Article 54(2) EPC for the simple reason that the corrected priority date is earlier than the publication date of this document. Instead, the Appellant, in reply to the Examining Division's first communication and in order to meet the novelty objection, restricted the subject-matter of claim 1 by way of a disclaimer delimiting, thus, the claimed invention from document (1), thereby de facto accepting it as state of the art. By this course of action, which was available to the public by way of file inspection, the Appellant made the public rely on the data of the published application, including the priority data, as being accurate and complete and that no error had occurred in this respect.

2.2.5 It was only after a second communication wherein the Examining Division acknowledged novelty but objected to inventive step vis-à-vis document (1), that the Appellant filed a request for correction of the priority data. In view of the Appellant's course of action in examination proceedings up to then this request came as a surprise to the public and was contrary to the principle of legal certainty regarding the valid priority date and, hence, whether document (1) was relevant state of the art or not. This is precisely the unsatisfactory situation for the public which should be avoided by the restrictions put on late corrections (see point 2.2.1 supra).

2.2.6 Thus, when balancing the interests of the Appellant in gaining optimal protection and the interests of the public in respect of legal certainty, in particular that the published application data are accurate and complete, the circumstances of the present case including the lack of promptness do not justify making an exception from the general rule that a request for correction, including the addition, of a priority should be made sufficiently early for a warning to be included in the publication of the application.

2.2.7 The Appellant, in support of his request for correction of the priority date, argued that the rights of the public were not affected by the requested correction since the present case was similar to that in the decision J 6/91 (loc. cit.) where the correction was allowed. He maintained that, like there, the interest of the public was safeguarded by the fact that it was apparent from the face of the published application that a mistake may have been made with respect to the priority data claimed since the application contained the statement that it was a "continuation-in-part" of an US-application filed on 6 October 1995. The filing date of the present application (4 October 1996) was only two days before the end of the twelve months period for claiming the priority right from the continuation-in-part application referred to. Those circumstances served as a warning to the public throughout the period whilst the application was pending.

The description of the present application comprises, indeed, an indication that it was a "continuation-in- part" of a particular US Serial number. However, the Appellant, when addressing the decision J 6/91 to support his case, ignores the finding in that decision "that, taken alone, the fact that the application was itself presented as a continuation-in-part application would not be sufficient to warn the informed public that a first priority might be missing" (point 5.5, paragraph 3 of the reasons). In contrast to case J 6/91, the course of the Appellant's specific actions in the present case was such that the very late request for correction came as a surprise to the public even if due account is taken of all relevant information contained in the published specification of the application; nor was the request submitted promptly (see points 2.2.4 to 2.2.6 supra). Therefore the relevant circumstances in the present case are substantially different from those underlying the decision J 6/91 such that the Appellant cannot successfully rely on that decision to support his case.

2.2.8 Furthermore, the Appellant argued that he acted promptly to get the priority data corrected as soon as he became aware that an error had occurred. This error, he said, was due to a misinformation by his US-Patent Agents. Since the German Agents did not go into detail concerning the actual dates of publication when dealing with the Examining Division's first communication, the error in the priority claim became apparent only after responsibility for instructing the prosecution of this application had been passed to the Appellant's intellectual property group. Once the error was identified, there was no undue delay in requesting correction thereof.

However, assessing the Appellant's request for correction on an objective basis, it cannot be considered as having been made promptly in view of what has been set out in point 2.2.4 supra. The Appellant's argument on promptness is rather based on deficiencies lying exclusively within his own sphere of influence. Those deficiencies cannot be taken into account when balancing his interest in seeking optimal protection and the public's interest in legal certainty since otherwise the applicant could take advantage from errors and deficiencies under his control and responsibility to the detriment of the public's interest, which the Board cannot sanction.

2.3 For all these reasons, the Appellant's request to correct the priority data pursuant to Rule 88 EPC must be rejected with the consequence that the only valid priority date of the present application remains the 9 May 1996.

Main request

3. Novelty

The only substantial issue arising from this appeal is whether the subject-mater claimed is novel over the state of the art.

3.1 Document (1) is published on 15 January 1996, i.e. before the only valid priority date of the present application as set out in point 2 supra, and, thus, is state of the art pursuant to Article 54(2) EPC. The Appellant never contested that this document discloses a phophitylating agent covered by present claim 1. On page 332, scheme 1 and on page 333, scheme 2 document (1) describes a phophitylating agent labelled "compound 1" having a formula which is in accordance with the general formula of present claim 1 wherein the substituent R has the meaning NC-CH2-CH2-O-, the substituent X is a 3-nitrotriazol group and the substituent Y is a diisopropylamino group.

3.2 The Board concludes from the above that document (1) anticipates the subject-matter of claim 1. Since a decision can only be taken on a request as a whole, none of the further claims need to be examined.

In these circumstances, the Appellant's main request must be rejected for lack of novelty pursuant to Articles 52(1) and 54 EPC.

First auxiliary request

4. For the reasons given in point 2 supra the correction of the priority data has been refused for the present application. Therefore the Appellant's first auxiliary request to remit the case to the first instance for continuing examination on the basis of a corrected priority date must necessarily fail.

Second auxiliary request

5. Referral of questions to the Enlarged Board of Appeal

According to Article 112(1)(a) EPC a Board shall refer a question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law or if an important point of law arises. Although a question may involve an important point of law, it is only referred to the Enlarged Board of Appeal if the answer to it is necessary to decide the case under consideration.

In the present case, the Appellant has formulated questions (see point IV supra) addressing the responsibility of Formalities Officers for the correction of priority dates in view of point 23 of the Notice of the Vice-President DG2 concerning the entrustment of certain duties to non-examining staff (loc. cit.) and the binding effect of their view on the Examining Division. However, regardless of whether the Formalities Officer or the Examining Division allowed the correction of a priority date in examination proceedings, that finding has no binding effect before the final decision on the application, i.e. its refusal or the grant of a patent, has been taken and, on appeal against such a decision, is open to review by the Boards of Appeal (see point 2.1.8 supra).

Hence, the answer to Appellant's question 1 is irrelevant for deciding the present case. The Appellant's questions 2 to 4 are dependent on question 1. and, thus, they share the same fate.

Under these circumstances, the Appellant's request to refer questions to the Enlarged Board of Appeal cannot be allowed.

Reimbursement of the appeal fee (Rule 67 EPC)

6. It is a prerequisite of Rule 67 EPC that the appeal be allowed in order that reimbursement of the appeal fee can be ordered. Since in the present case the appeal is unsuccessful, already for this very reason the Appellant's request for the reimbursement of the appeal fee must fail.