J 0003/95 (ETA) 28-02-1997

Reasons for the Decision

1. The appeal filed against the decision of the Legal Division dated 5 August 1994 is admissible. The purpose of the present proceedings is to determine whether or not that Division had the power to consider the requests submitted to it on 11 November 1992 by ETA SA Fabriques d'Ebauches, and, if necessary, to establish whether or not the requests should be granted.

2. As to the subject of powers, Article 15(e) EPC states that the Legal Division is one of the European Patent Office departments charged with the implementation of the procedures laid down by the European Patent Convention. Article 20(1) EPC provides that this Division shall be responsible in particular for decisions in respect of entries in the Register of European Patents. Furthermore, in decision J 18/84 (OJ EPO 1987, 215, see points 2.4 and 2.5 of the Reasons) it has already been found that, pursuant to these texts, an entry in the Register of European Patents falls within the scope of the administrative procedure but that, once the EPO refuses or contemplates refusing to make the said entry, only the Legal Division has the power to take a decision. Since, in the present case, it appears that the EPO refused to grant the requests submitted by ETA SA regarding the entries in the Register, the Legal Division did have the power to take a decision, firstly, to explain the grounds for this refusal and, secondly, to give the appellant leave to appeal.

3. As to the merits of the case, the board finds that the purpose of all the requests submitted by ETA SA following decision T 456/90 was to obtain a review of the decision and the suspension of the effects of the decision pending that review. That is true irrespective of how they have been defined. It is the case with the application for re-establishment of rights and the notice of appeal, both submitted by the appellant on 16 January 1992, and it is also true of the requests which it filed with the Legal Division on 11 November 1992. The decision to be taken in the present appeal therefore depends, firstly, on the reply to the question as to the action to be taken in response to such requests and, secondly, if such actions are or are not to form the subject of entries in the Register of European Patents.

In this connection, two possible courses of action emerge from the summary of facts and submissions forming the first part of this decision:

- jurisdictional action as requested by the appellant, there being two options, namely, reopening the appeal at issue or entering a new appeal against the appeal at issue;

- administrative action as taken by the Chairman of Board 3.5.2 and the Vice-President responsible for the boards of appeal, who, after finding that the action requested by the appellant did not appear to them to be compatible with the provisions of the EPC, advised it by mail that its requests would not be considered.

A third course of action might involve a special jurisdictional procedure equivalent to the principles generally adopted for this purpose in the contracting states.

On reopening the appeal proceedings or entering a new appeal

4. Article 21(1) EPC and its corollary, Article 106(1), state that, within the European Patent Office, the boards of appeal are the last instance responsible for the application of the procedures laid down by the EPC. Article 106(1) does not specify that an appeal shall lie from decisions of the boards of appeal, and Article 21(1) EPC limits the responsibility of these boards to the examination of appeals from the decisions of the Receiving Section, examining divisions, opposition divisions and of the Legal Division. Once the board of appeal has taken a decision concluding an appeal, therefore, the case is finally closed as far as internal EPO procedures are concerned. Since the boards of appeal do not have the power to review their own decisions, and as the EPC did not create an authority for this purpose, their decisions become final and enter into force on the date they are issued or notified.

5. This is confirmed by European Patent Office board of appeal case law, which is based mainly on the principles arising from the maxims Res judicata pro veritate accipitur (the final decision is held to be the truth) and Lata sententia, judex desinit esse judex (once the decision has been given, the judge ceases to be judge). These are generally accepted rules of procedure in the contracting states.

6. The principle arising from the res judicata maxim is based on the need for an end to all litigation. It is generally accepted and provides legal certainty, while taking account of the general public concern for the settlement of disputes (expedit rei publicae ut finis litium sit). It protects everyone from becoming lost in a bureaucratic maze of legal proceedings. Parties are not to become embroiled in proceedings on precisely the same question more than once (nemo debet bis vexari pro una eadem causa). It therefore prohibits parties from challenging what has already been decided. Once all the usual available remedies have been exhausted, a decision becomes final, that is to say, its enforcement can no longer be suspended by an appeal. It cannot therefore be challenged except by any special remedies which may be provided for this purpose in the law.

6.1 In board of appeal case law, the effect of the principle arising from the res judicata maxim is the same as that attributed to a judgment which has become final, as specified in point 3 of the Reasons for decision T 934/91 (OJ EPO 1994, 184):

"... it defines... a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies (see Black's Law Dictionary, 5th Edition). Such a final judgment by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies".

It seems clear that the phrase "rendering that matter conclusive" used in decision T 934/91 above means the same as a "judgment which has become final".

The following decisions illustrate established board of appeal case law on this matter: T 79/89 (OJ EPO 1992, 283), T 678/90 dated 23 November 1994 (not published in the OJ EPO), T 690/91 dated 10 January 1996 (not published in the OJ EPO), T 934/91 (OJ EPO 1994, 184), the interlocutory and final decisions in case T 843/91 (OJ EPO 1994, 818, and OJ EPO 1994, 832), T 167/93 (for publication in the OJ EPO).

6.2 The principle of a decision which has become final (res judicata) is supported by the doctrine "Once the decision has been given, the judge ceases to be judge" (Lata sententia, judex desinit esse judex). This means that the dispute is no longer before the court which has settled it, once the judgment has been given or notified, depending on the circumstances. The court whose decision has become final cannot review its decision again, even with the parties' consent. All that generally remains is the possibility of correcting obvious mistakes of a purely material nature (see Rule 89 EPC).

6.3 The principle of a decision which has become final applies to decisions of a judicial nature, that is to say, decisions taken by a court. In this connection, the Enlarged Board of Appeal clearly established in decision G 1/86 (OJ EPO 1987, 447, point 14 of the Reasons) that the European Patent Office boards of appeal act as courts.

The status of the boards of appeal was also recently addressed by the High Court of Justice in the United Kingdom (Patents Court) in R. v The Comptroller of Patents, Designs and Trade Marks ex parte Lenzing AG. The High Court held that "the final arbiter of revocation under the new legal system [of the EPC] is to be the Board of Appeal of the EPO", and that "the UK and the other Member States have agreed at an international level via the EPC that the BoA is the final arbiter of oppositions. It is the agreed EPO equivalent of the House of Lords, Cour de Cassation or Bundesgerichtshof... Those who apply for patents in the EPO must accept the results of its findings and its methods of procedure". This decision also acknowledged that the EPO boards of appeal constitute a specialised court exercising judicial authority within the meaning of Article 32 of the TRIPS Agreement.

7. Furthermore, this Board considers that serious disadvantages could arise from any reopening of a case once a European Patent Office board of appeal decision has become final. The same disadvantages would arise if a new appeal were entered against the appeal at issue.

7.1 Article 106(1) EPC states that any appeal has suspensive effect. If an appeal against a board of appeal decision were to be deemed admissible, the new appeal would be subject to the same rules of procedure as the previous one and would therefore have suspensive effect, thus preventing the decision appealed against from having legal effects. This would also mean that a decision under appeal could have no legal effects at least until the date on which the board of appeal hearing the new appeal gave its decision (see J 28/94, OJ EPO 1995, 742). This would create considerable uncertainty as to the time when board of appeal decisions become enforceable, and such uncertainty could be permanent. In practice, as soon as the new appeal case was opened, the appellant would enjoy the rights enjoyed by any party to proceedings before the EPO. In particular, the provisions of Articles 110, 113 and 116 EPC would apply. According to Article 110 EPC, the board must invite the parties, as often as necessary, to file observations on communications from another party or issued by itself. Under Article 113 EPC, board of appeal decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Finally, under Article 116 EPC, oral proceedings have to take place as soon as any party to the proceedings requests it. Neither the reopening of an appeal where the appeal decision is at issue nor the entering of a new appeal enables an allegation of a violation of a fundamental procedural principle to be examined rapidly and a decision then to be taken promptly.

7.2 There are other negative aspects associated with the entering of a new appeal or the reopening of an appeal case. If such courses of action were allowed, they might be used purely as delaying tactics. The effects would be all the more unmanageable since a procedure of this kind, which would have to be concluded by a new board of appeal decision, might then in the same manner become the subject of a new dispute in which the violation of a fundamental procedural principle was again relied on. The appeals could go on ad infinitum.

7.3 Such consequences would be likely to upset the general equilibrium of the system based on the European Patent Convention by possibly extending, out of all proportion, the procedure up to grant.

On the administrative mail reply

8. In this case, the action taken by the Chairman of Board 3.5.2 and by the Vice-President with responsibility for the boards of appeal in response to the requests of 16 January 1992, namely the replies by mail, may be held to be purely administrative objections to admissibility. This practice is that adopted for responses to the few requests of this type which have been submitted to the boards of appeal since they were first created. They are strongly objected to by the appellant, mainly because they do not provide a solution to the substance of the questions raised.

On a special course of action through the courts

9. A judgment generally remains final even if it is challenged on an irregularity (a violation of a fundamental procedural principle, for example) by means of a special appeal. The law provides such remedies in a number of the contracting states and before the Court of Justice of the European Communities (see Art. 41 of the Second Protocol on the Statute of the Court).

9.1 In France, for example, the purpose of a petition for review is to have a decision which has become final withdrawn (Articles 593 ff of the Nouveau code de procédure civile - NCPC); it is termed a special appeal, its main features being that enforcement is not suspended (Article 579 NCPC) and that it cannot be challenged by a new petition for review (Article 603 NCPC). Other countries have similar remedies available to parties against decisions which have become final. This is the case in Spain, for example, with the "Recurso de revisión" governed by Articles 1796 to 1810 of the Ley de Enjuiciamiento Civil (LEC) and in Italy, where there is a "Revocazione straordinaria" provided for in Article 395 of the Codice di procedura civile. It is also the case in Switzerland, which provides for various possibilities at both cantonal and federal level: there is the recours de nullité (Art. 68 ff of the Loi fédérale d'organisation judiciaire), the révision d'un arrêt du Tribunal fédéral (Art. 136 ff OG), and the recours de droit public (Art. 84 OG). In Austria, there is the Nichtigkeitsklage (Section 529 of the Zivilprozessordnung - ZPO) and the Wiederaufnahmeklage (Section 530 ZPO). German law makes a similar provision with the Wiederaufnahme referred to in Section 578 of the Zivilprozessordnung. These remedies, which are frequently referred to as special, do not have suspensive effect except in the case of Italy. In all cases they are provided for by the law in addition to the usual means of obtaining redress. While the cases where proceedings may be initiated are set out restrictively by the law in the majority of the countries referred to by way of example, in the case of the recours de droit public in Switzerland the Federal Court may infer new violations of rights giving rise to an appeal from the principle of equality, which is itself provided for in the law. In the English system, after the usual remedies have been exhausted, the court may set aside its own final decision in a limited number of cases following a serious irregularity such as a violation of a fundamental procedural principle (Craig v Kanssen [1943] 1 KB 256, [1943] I All ER 108, CA). One criterion for deciding the seriousness of the breach of procedure is to determine whether it constitutes a failure to observe the principles of natural justice (Marsh v Marsh [1945] AC 271 at 284) (see Halsbury's Laws of England, Fourth Edition, Vol. 26, 556).

9.2 The EPC texts do not provide for similar procedures. Only Article 23 of the Regulation on discipline for professional representatives provides for the possibility of the revision of a final decision by the disciplinary bodies.

Referral to the Enlarged Board of Appeal

10. Under Article 112(1)(a) EPC, in order to ensure uniform application of the law, or if an important point of law arises, the board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.

According to the present Board, the question as to the administrative or jurisdictional procedure to be adopted by the boards of appeal in response to requests such as those submitted in the case in point raises an important point of law, since neither the EPC nor the case law or procedural or administrative practices of the boards of appeal provide a clear answer.

Similarly, the question arises as to whether or not the procedure to be adopted will have to be entered in the Register of European Patents.