1.2.3 Judicial or quasi-judicial authorities under the TRIPS Agreement

As to the applicability of the TRIPS Agreement in proceedings before the EPO, see chapter III.H.2. "Interpretation of the EPC affected by TRIPS Agreement".

Art. 62(5) TRIPS provides that final administrative decisions in procedures concerning the acquisition or maintenance of intellectual property rights and, where a member's law provides for such procedures, administrative revocation and inter partes procedures such as opposition, revocation and cancellation, must be subject to review by a judicial or quasi-judicial authority. Art. 32 TRIPS requires member countries to provide an opportunity for judicial review of any decision to revoke or forfeit a patent.

In G 1/97 (OJ 2000, 322) the Enlarged Board of Appeal noted that boards of appeal may be seen as having the status of judicial authorities, since they embody all the features of such an authority: in their decisions, the members of the boards are not bound by any instructions and are obliged to comply only with the provisions of the EPC (Art. 23(3) EPC 1973; see also R 19/12 of 25 April 2014 date: 2014-04-25, where the Enlarged Board stressed that the Service Regulations for EPO employees provide in Art. 1(4) that they only apply to board members in so far as they are not prejudicial to their independence); they are appointed for a fixed term, during which they may not be removed from office except if there are serious grounds for so doing (Art. 23(1) EPC 1973); the EPC contains provisions for safeguarding the impartiality of board members (Art. 24 EPC 1973); the boards always include at least one legally qualified member (Art. 21 EPC 1973); they have their own rules of procedure; and finally, they issue written decisions containing a statement of reasons (R. 66(2) EPC 1973 – R. 102 EPC). Regarding the judicial nature of the boards of appeal, reference was also made to the House of Lords' decision of 26 October 1995 in Merrel Dow v. Norton, [1996] R.P.C. 76, and to the decision of the United Kingdom High Court of Justice dated 20 December 1996, in the case of Lenzing AG's European Patent (UK), [1997] R.P.C., 245). Even if the status of a judicial authority were to be contested, it would be clear that, in the light of the foregoing, the boards of appeal constitute at least a quasi-judicial authority as referred to in Art. 62(5) TRIPS. The Enlarged Board also examined the relationship between Art. 62(5) TRIPS and Art. 32 TRIPS. Art. 32 appears in Part II of TRIPS, which does not contain rules of procedure concerning the acquisition of patent rights but provisions concerning the exercise of rights conferred by a patent, together with certain rules on substantive patent law. By contrast, Part IV of TRIPS, containing Art. 62 as its sole provision, deals with the acquisition and maintenance of intellectual property rights, which include patent rights. Applying the principle of lex specialis derogat legi generali, the Enlarged Board held that this aspect was much more specific than the fact that Art. 32 TRIPS only concerns patents whereas Art. 62 TRIPS also deals with other types of intellectual property rights. The Enlarged Board concluded that Art. 62(5) TRIPS takes precedence over Art. 32 TRIPS in matters relating to the grant of European patents (see also J 3/98).

In T 557/94 the appellant (patentee) referred to Art. 32 TRIPS, which guarantees an opportunity for judicial review of any decision to revoke a patent, and requested that the case be remitted to the department of first instance if the patent were revoked on the basis of a prior art document introduced during appeal proceedings. The board found that, under Art. 111(1), second sentence, EPC 1973, the board of appeal was empowered either to decide on the merits of the case or to remit the case; it was not restricted to the latter alternative if the opposition division maintained the patent and the board was considering revoking the patent for the first time (see chapter V.A.9. "Remittal to the department of first instance"). Reading Art. 32 TRIPS in the context of the usual structure of judicial review in the EPC contracting states and the EPC 1973 itself, this provision guaranteed an instance for judicial review in revocation proceedings, but did not oblige the reviewing instance to remit the case to the department of first instance for continuation of proceedings when revocation was being considered by the judicial instance for the first time.