Pages 747-752

DECISIONS OF THE EXAMINING AND OPPOSITION DIVISIONS

Decision of the Opposition Division dated 13 May 1992^*

(Translation)

Proprietor: Müllverbrennungsanlage Wuppertal GmbH

Headword: No-challenge obligation

Article: 99, 58 EPC

Rule: 56(1) EPC

Keyword: "Admissibility of the opposition - No-challenge obligation"

Headnote

1. Invoking a no-challenge obligation is incompatible with the object and purpose of the centralised European opposition procedure and in most cases does not lead to what is otherwise an admissible opposition being declared inadmissible.

2. In such cases a patent proprietor's only recourse is to pursue any claims arising from such an obligation before the competent (national) courts.

Order

The opposition to European patent No. 0 157 920 is rejected.

Summary of Facts and Submissions

European patent No. 0 157 920 was granted in respect of European patent application No. 84 114 826.5 filed on 6 December 1984 (...). Mention of the grant of patent was published in European Patent Bulletin No. 89/30 on 26 July 1989.

Company (...) filed notice of opposition against the grant of the European patent on 20 April 1990 requesting revocation of the patent (...).

The patent proprietors request that the opposition be rejected on the grounds of inadmissibility. They contend that an obligation not to challenge the property right can be inferred from an exclusive licence agreement concluded between the parties, which also extends to the contested patent, rendering the opposition inadmissible on the grounds that it is in violation of good faith. (...)

From the Reasons for the Decision

(...)

A. The question of admissibility

The patent proprietors maintain that the exclusive licence agreement concluded between the parties implies an obligation on the part of the opponents to refrain from challenging the patent. While no express provision was made to this effect, the agreement should be interpreted within the wider context of good faith.

This argument is held to carry no weight in opposition proceedings before the European Patent Office for the following reasons:

1. Under Article 99 EPC "any person" may give notice of opposition. There are therefore no restrictions on the person filing the opposition aside from the general conditions applicable to parties to proceedings under Article 58 EPC. Any person meeting these criteria may also file an opposition (van Empel: The Granting of European Patents, Leyden 1975, No. 469; Mathely: Le Droit européen des brevets d'invention, Paris 1978, p. 297). Article 58 EPC refers only to the applicant. However, as the Convention itself does not contain any general rules on entitlement to participation in opposition proceedings, the principle contained in Article 58 EPC may also be applied to opposition proceedings.

Rule 56(1) EPC lists the deficiencies which will lead to an opposition being declared inadmissible. A notice of opposition complying with the provisions of Article 99(1), Rule 1(1) and Rule 55(c) EPC is admissible. None of these provisions imposes restrictions on the person of the opponent other than those contained in Article 58 EPC.

2. Precedent in a number of the Contracting States to the EPC has it that an opposition filed against a national patent may be regarded as inadmissible if the opponent is under a contractual obligation not to challenge the patent. For this to be the case the contractual obligation must have been expressly entered into or be inferable from the circumstances (cf. Dolder: Nachwirkende Nichtangriffspflichten des Arbeitnehmererfinders im Schweizerischen Recht, GRUR Int. 1982, 158, 167 et seq.; Schulte, 4th edition 1987, Section 59 (German) Patent Law, point 6, which is at variance with the precedent of the previous law. A similar line is also followed in Benkard-Schäfers, Section 59 (German) Patent Law, point 5, although the question has yet to come before Germany's supreme court. Doubts have also been raised by von Maltzahn in von Maltzahn, Falk: "Zur rechtlichen Beurteilung von Nicht angriffsabreden über technische Schutzrechte" in Festschrift für Otto Friedrich Freiherr von Gamm, 1990, 597 et seq., 602).

3. Be that as it may, this interpretation cannot be followed in opposition proceedings before the European Patent Office. To recognise a no-challenge obligation as a bar to an opposition's admissibility is at variance with the purpose of the European opposition procedure, which is to allow continued examination of a patent in the light of prior art which was either not found by the patent office or which was not available to it and which has been introduced into the proceedings by a third party, this being in the interests not only of individual competitors, but also of the public at large (cf. van Empel, op. cit., Nos. 461, 463).

The Convention does not allow opponents to use the facts of a case purely as they see fit (Article 114(1) EPC), nor do they alone decide whether proceedings should be continued (Rule 60(1) and (2) EPC). Recognising an undertaking waiving the right to file an opposition would be at variance with the principle of allowing a patent to stand only after it has been thoroughly examined in the light of the relevant prior art with the possibility of the general public intervening.

An opposition filed against a European patent differs from opposition proceedings before national authorities in that it offers the only possibility of subjecting the validity of the European patent, which is uniform in terms of its content and the requirements for its protection, to centralised examination.

4. Moreover, the question of the admissibility and scope of no-challenge agreements arouses considerable controversy (cf. with regard to German law von Maltzahn, Falk: "Zur rechtlichen Beurteilung von Nichtangriffsabreden über technische Schutzrechte" in Festschrift für Otto Friedrich Freiherr von Gamm, 1990, 597 et seq., 602).

Where Community cartel law is applied to no-challenge agreements referring to European patents, and this is always questionable, no-challenge agreements are seldom accepted as admissible. The Commission views no-challenge agreements as a restriction on trade and competition between Member States which exceeds the degree of protection of property rights guaranteed under Article 36 of the EEC Treaty and therefore as not covered by the exemption applying to patent licensing agreements under Commission Regulation (EEC) No. 2349/84 of 23 July 1984 (Official Journal L 219 of 16 August 1984, 15 et seq. - in particular Article 3(1) thereof), at best only qualifying for individual exemption under Article 85(3) of the EEC Treaty if special circumstances can be cited.

In Judgment 193/83 - "Windsurfing International" the Court of Justice of the European Communities held a no-challenge clause in a patent licensing agreement to constitute an unlawful restriction on competition between manufacturers and - in Headnote 2 - to be incompatible with Article 85 of the EEC Treaty. It ruled that such clauses clearly do not fall within the specific subject-matter of the patent, which cannot be interpreted as offering protection against challenges to the patent, as it is in the public interest to eliminate any obstacle to economic activity which may arise where a patent was granted in error (GRUR Int. 1986, 635, 640/641). In Judgment 65/86 - "Süllhöfer" (GRUR Int. 1989, 56) the Court modified this principle for certain cases not elaborated on here. The implications of this decision would also seem to require clarification (cf. von Maltzahn, op. cit. 610 et seq.).

The prohibitions under cartel law also determine whether an obligation not to challenge a patent can be inferred from the circumstances where no such express agreement exists. If such an express undertaking is ruled unlawful and void because it contravenes cartel law, good faith cannot be invoked to compel a licensee to adhere to it.

5. Within the territory covered by a European patent it can also occur that more than one set of national civil and cartel laws apply to a single no-challenge agreement, or that Community cartel law is only applicable to some of the designated States. Article 99(2) EPC alone is sufficient to rule out any allowance being made in proceedings before the European Patent Office for the differences in the effects a decision might have in the various Contracting States.

6. Ultimately such matters are for national civil and/or cartel courts, or possibly national and European cartel authorities, to decide. In national law the question of whether normal civil or cartel courts have jurisdiction can be settled by passing corresponding legislation, as has been done in Germany, for example, with Section 96 of the Law against restraints on competition ("Gesetz gegen Wettbewerbsbeschränkungen - GWB").

Any attempt by the European Patent Office to examine all these questions itself would be a usurpation of these competencies with the concomitant danger of diverging decisions.

7. In the light of the foregoing it follows that the fact that an obligation not to challenge a patent has been either expressly agreed or can be inferred from a broad interpretation in good faith cannot be invoked to render an opposition against a European patent inadmissible. Rathermore, where such an agreement exists, a patent proprietor's attempt to enforce adherence by the licensee, or to pursue claims arising from breach of contract, must be made before national courts.

8. This leaves unanswered the question of how a case might be assessed in which the opponent had been prohibited in a final judgment from challenging the European patent, or in which the opponent had undertaken not to challenge the property right in a court settlement, or in which the opponent had obtained negative clearance for a no-challenge agreement (Article 2 of Council Regulation No. 17: First Regulation implementing Articles 85 and 86 of the Treaty) or an individual exemption declaration of the Commission (Article 6 of the same Regulation in conjunction with Article 85(3) of the EEC Treaty) where only EC Member States had been designated in the European patent.

None of the above is applicable to the present case.

9. Nor have the patent proprietors furnished any evidence which, under German law - to which the contract is subject - would justify their applying the principle of good faith to infer a no-challenge obligation.

The patent proprietors' assertion that this agreement was signed with the intention of establishing a collaborative relationship based on mutual trust to the extent that any challenge to the property rights covered by the agreement would be in violation of good faith is based entirely on the fact that the licence agreement concluded between the parties was an exclusive one.

This interpretation does not follow the precedent established by the German Federal Court of Justice (Bundesgerichtshof).

In previous rulings - Case No. I a ZR 93/65 "Gewindeschneidvorrichtungen" ("Threading attachments"), GRUR1971, 243, 245, and again in Case No. X ZR 3/88 -"Flächenentlüftung" ("Area ventilation"), GRUR 1989, 39, 40 - the Bundesgerichtshof did indeed hold that the existence of a patent licensing agreement could justify the application of the principle of good faith to infer a no-challenge obligation, provided the contractual relationship of the parties was of a business character, or the trust on which the collaboration agreed between the parties was based required mutual respect for each other's interests. However, to be able to decide whether this is the case the contractual relationship as a whole must be examined and assessed as to its lawfulness. No such arguments have been put forward in the present case. A no-challenge obligation cannot be inferred from the circumstances merely because a licence agreement contains an exclusivity clause ("Gewindeschneidvorrichtungen", op. cit.).

10. For the above reasons the patent proprietors' contention that a no-challenge obligation can in good faith be inferred from the circumstances is no justification for ruling the opposition inadmissible.

No consideration need therefore be given to whether any significance is to be attached to the fact that the licence agreement was terminated after expiry of the opposition period and now no longer applies.

B. The question of patentability

(...)