Pages 285-295

BOARDS OF APPEAL

Decisions of the Enlarged Board of Appeal

Decision of the Enlarged Board of Appeal dated 17 December 1993 - G 12/91

(Translation)

Composition of the Board:

Respondent/Patent proprietor:

NOVATOME

Appellant/Opponent: GEBRÜDER SULZER AKTIENGESELLSCHAFT

Headword: Final decision/

NOVATOME II

Rule: Rule 68 EPC

Keyword: "Conclusion of written proceedings" - "Handing over of decision by formalities section to EPO postal service"

Headnote

The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department's formalities section.

Summary of Facts and Submissions

I. Gebrüder Sulzer Aktiengesellschaft filed notice of opposition to European patent No. 0 078 208 granted to Novatome requesting revocation of the patent.

II. Oral proceedings not having been requested, the Opposition Division pronounced its decision following written proceedings. On 15 September 1988 it rejected the opposition using EPO Form 2339.1. This form bears the signatures of the three members of the Opposition Division and contains the following text: "Rejection of the Opposition (Art. 102(2) EPC) using Form 2330". Form 2330.2 states that the opposition is rejected, draws attention to the possibility of appeal and indicates that the grounds for the decision are attached on seven pages of Form 2916. Form 2330.2 is date-stamped 12 October 1988. Form 2330.2, with Form 2916 attached, was despatched to the parties by registered letter with advice of delivery. The registered letters were despatched by the EPO on 12 October 1988.

III. In a letter dated 4 October 1988 received by the EPO on 6 October 1988 - the patent proprietor requested that the patent be maintained on the basis of new amended Claims 1 to 8, which were to replace Claims 1 to 9 as granted. Claims 1 and 2 as granted were combined in a new Claim 1. The opponent was notified of the letter dated 4 October 1988 in a letter dated 17 October 1988, but this letter was disregarded by the Opposition Division in its decision.

IV. The opponent lodged an appeal against the decision of 12 October 1988 rejecting the opposition, primarily arguing that the Opposition Division should not have decided to maintain the patent on the basis of the claims as granted because, on the date the decision was pronounced, the patent proprietor was no longer in agreement with the patent being maintained as granted, but only as amended. Failure to take account of the patent proprietor's request of 4 October 1988 constituted a breach of Rule 58 EPC which justified reimbursement of the appeal fee.

V. Technical Board of Appeal 3.2.4 was competent to hear the appeal. In its decision of 22 November 1991 referring the matter to the Enlarged Board of Appeal it noted that there was no way of deducing from the EPC at what point the internal decision-making process within an EPO department is completed following written proceedings. It was however essential that this point in time be clearly established if, for example, decision-making departments were to be prevented from wrongly disregarding requests for amendments, new documents or requests for oral proceedings. If the decision of an EPO division was pronounced following written proceedings there were three different moments in time at which the internal decision-making process could be considered to be completed:

(a) the point when the members of the decision-making department have all signed and dated the form;

(b) the handing over, by the formalities section of the decision-making department, of the reasoned decision to the EPO postal service;

(c) the despatch of the reasoned decision.

For these reasons Board of Appeal 3.2.4 decided to refer the following point of law to the Enlarged Board of Appeal:

"If the decision of an Examining or Opposition Division is pronounced not at the end of oral proceedings but following written proceedings or proceedings continued in writing after oral proceedings, at what point is the internal decision-making process within that department of the EPO completed?"

VI. To clarify the issue of the point in time at which an opposition division pronounces a decision following written proceedings, the Enlarged Board of Appeal asked the President of the European Patent Office to outline the Office's current practice in this regard. The President replied that, for different reasons, two dates are important with regard to the taking of a decision:

-the first date is the date of the written decision, i.e. the date on which it is signed by the members of the Opposition Division. This is the date entered by the Chairman of the Opposition Division, who is always the last to sign the original copy of the decision (Form 2339), which is kept on file. This date is used to establish that the decision was taken by the Opposition Division in its correct composition. This date is not communicated to the parties because, as a general rule, it is of no interest to them. Exceptionally - if, for example, a party questions whether the composition of the Opposition Division was correct - the parties are allowed to inspect the file to ascertain this date;

- the second date is of more importance to the parties because it indicates at what point in time the EPO posts the decision, the point which, under Rule 78(3) EPC, is decisive for calculating time limits. Once the members of the Opposition Division have signed Form 2339.2, the primary examiner checks the fair copy of the reasons for the decision. The file is then forwarded to the formalities section to prepare the decision for notification to the parties. The formalities officer enters the date on which the decision is to be despatched on Form 2330. To ensure that the date entered is indeed the date the decision is actually posted, decisions are systematically postdated by three days. This practice was established by DG 2 Staff Notice 1/88-III dated 22 February 1988. If the decision cannot be despatched on that date as intended, the EPO postal service returns it to the Opposition Division's formalities officer for the date to be changed accordingly.

The President also pointed out that the final date on which documents submitted by one party to the opposition proceedings can still be considered is the date on which the written decision to be notified has still not left the Office, i.e. has not yet been removed from its power. Even if the decision to be notified to the parties has already been handed over to the EPO postal service by the formalities officer, the Opposition Division will endeavour to interrupt the notification process and recover the decision.

VII. The President's observations were notified to the parties who declined to comment.

Reasons for the Decision

1. As the decision to refer this point of law to the Enlarged Board of Appeal shows, establishing the point in time at which the internal decision-making process involving a decision pronounced following written proceedings is completed is of vital importance to the general question of determining the final point at which a first-instance department at the EPO can still take account of further submissions by the parties.

2. To do so it is first necessary to distinguish between decisions taken after the closing of the debate in oral proceedings and decisions taken following written proceedings. Where oral proceedings are held, the decision may be given orally. The decision becomes effective by virtue of its being pronounced. The equivalent of this moment in written proceedings is the moment the decision is notified. Once it has been pronounced and, in the case of written proceedings, notified, the decision enters into force and cannot be amended, even by the department that issued it. A decision may only be revoked by the department that issued it by way of an interlocutory revision under Article 109 EPC if one of the parties has filed an admissible and well-founded appeal.

3. However, the point in time at which a decision enters into force, i.e. the moment it is pronounced or notified, is not the last moment at which parties may still submit observations. This must be done at an earlier point in the proceedings to allow the decision-making department time to deliberate and then to issue its decision based on the parties' submissions. As far as oral proceedings are concerned, established Board of Appeal case law has this moment as the closing of the debate, this point being fixed by the decision-making department - having first heard the parties' submissions - to allow itself time to consider its decision (cf. J 42/89 of 30 October 1991; T 762/90 of 29 November 1991, EPOR 1993, 296; T 595/90 of 24 May 1993, headnote published in OJ EPO 1993, No. 11, page XVII). Once the debate has been closed, further submissions by the parties must be disregarded unless the decision-making department allows the parties to present comments within a fixed time limit or decides to reopen oral proceedings for further substantive debate of the issues.

4. In the case of decisions taken following written proceedings, the final moment at which fresh matter submitted by the parties can still be taken into account must correspond to the closing of the debate during oral proceedings. The need to ensure legal certainty requires that this moment be as clearly fixed as the moment of the closing of the debate pronounced during oral proceedings. Neither the Convention nor its Implementing Regulations contain any provision fixing this moment. The dates the Enlarged Board has examined as to their suitability are the following:

(a) signature by the members of the Opposition Division of Form 2339 or, more precisely, by the Chairman, who is always last to sign and who dates the form;

(b) the handing over, by the Opposition Division, of the fair copy of the decision to the formalities section for notification;

(c) the handing over by the formalities section to the EPO postal service of the decision to be notified bearing the date-stamped, post-dated date of despatch of the decision by the EPO postal service;

(d) the despatch of the decision to be notified by the EPO postal service.

5. Of the above-mentioned dates, (a) and (d) would at first sight appear to be suitable as they can be clearly determined.

6. Date (d), the date of despatch of the decision on the date stamped, was held to be decisive in Board of Appeal 3.3.1's decision of 7 August 1989 (T 598/88, Supplement to OJ EPO 6/1990, page 43). A request for oral proceedings had been received before the date of the decision, and it should therefore have been complied with because it had been submitted before the date of the decision.

6.1 In support of this decision it should be recalled that the decision notified to the parties can create the impression that it was taken on the date indicated by the date stamp. This is not however the case -as can be gathered from the President's observations and the DG 2 Staff Notice 1/88-III of 22 February 1988. The date indicated to the parties by the date stamp is in fact the date on which the decision was despatched by the EPO postal service. There is no indication in the decision itself of the date on which the decision was taken.

For technical reasons, some of the text in this article is only available in the PDF version.

6.2 There is no legal means of querying this practice as the EPC contains no requirement that decisions by first-instance departments should indicate the date on which the decision was taken. The only passage in the EPC requiring that a decision contain the date when the decision was taken is to be found in Rule 66(2), but this only applies to board of appeal, i.e. final-instance, decisions. This procedural rule allows the EPO to indicate not the date when first-instance decisions are taken but merely the date of their despatch. This practice is consistent with the EPC, with the advantage that, based on this date, parties can easily calculate the date of notification, which is laid down by the EPC in Rule 78(3), notification being deemed to have been made on the tenth day following the despatch of the decision.

For these reasons the date stamped on the decision cannot be considered as being the point in time when parties may still submit fresh matter which must be considered.

7. In its decision of 3 April 1989 (T 584/88, EPOR 1989, page 449) Board of Appeal 3.3.1 appears to have held date 4.(a), i.e. the date the three members of the division signed the relevant form, to be the decisive moment. In this case the three members of the Examining Division had signed Form 2048 refusing the patent application on 8 June 1988. This decision had been despatched on the date stamped, 13 July 1988. The primary examiner had since left the Examining Division (on 1 July 1988), but prior to this, on 22 June 1988, he had added a handwritten note to the file indicating that he had taken note of the reasons for the decision and was in agreement with them. The Board concluded that the decision had been taken by the Examining Division in its correct composition.

7.1 The date on which the three members of an examining or opposition division sign a decision is extremely important, as the date indicated is the date on which the department in question decides on the issue, i.e. whether a patent application must be refused, an opposition rejected, a patent granted or revoked. However, it is also a decision taken" in camera", because at the moment it is taken it does not have any immediate effect on the parties involved and is not therefore binding on the department that issued it. If, after it has signed it, the decision-taking department discovers that it has failed to take account of a key point, it may amend its decision, despite having already signed it, because it has not yet left its custody.

7.2 T 584/88 clearly shows that at the moment the decision is signed by the members of the decision-taking department it is still in "statu nascendi". In this case, the substantive decision had been taken on 8 June 1988, but the primary examiner had not approved the reasoned decision until 22 June 1988.

7.3 This is also the President's opinion as he states that the date the members of the division sign the decision is less important than the date the decision is despatched, and consequently the first date is not notified to the parties. In exceptional cases -when doubt has been cast on whether the composition of the division was correct, for example -the parties are allowed to ascertain the date by inspecting the file.

7.4 The EPC itself does not accord the date of signature by the members of a division any particular significance. It has already been mentioned (see 6.2 above) that the Convention does not -as is the case for board of appeal decisions require that the date of signature be indicated in the decision and notified to the parties. It can therefore be concluded that the legislator did not intend the date of signature to be accorded the significant effect of binding the division to its signed decision from this point onwards, preventing it from taking account of important developments occurring after this date. Had this been the intention the EPC would have required that the date the decision was taken be indicated, as is the case with board of appeal decisions.

7.5 The EPC's reason for treating board of appeal decisions differently from examining or opposition division decisions could equally well lie in the fact that first-instance decisions are appealable. If it were the case that the first-instance department's internal decision-making process is completed on the date its members sign the decision -a date not known to the parties involved the result would be pointless appeals because the first instance would no longer be able to take account of important developments affecting the decision which occurred after this date, even though the decision had not yet left its hands.

7.6 Having weighed up the various arguments, the Enlarged Board of Appeal has reached the conclusion that the date a decision is signed is not the point in time at which the internal decision-making process is completed.

8. If, for the above reasons, neither the date stamped on the decision nor the date the substantive decision was signed can be considered as constituting the point in time at which the first-instance department's decision-making process is completed, the question remains as to which date can be considered as doing so. This date must be clearly definable, both in the interests of ensuring that proceedings before the EPO are carried out correctly, as well as of the parties to the proceedings, to ensure that both the decision-taking department and the parties know the precise moment at which account can still be taken of new circumstances with an important bearing on the decision.

Date 4.(b), i.e. the point in time when the division hands over the fair copy to the formalities section for notification, is not suitable for this purpose because it cannot be ascertained from the file and therefore remains unknown to the parties.

9. This only leaves date 4.(c), the date on which the date-stamped, post-dated decision is handed over to the EPO postal service by the formalities section.

9.1 At first sight, the fact that it is not directly brought to the knowledge of the parties would seem to militate against choosing this date. On the other hand it is a date the parties can ascertain very easily, because, as the President of the EPO explained, it is always three days prior to the date stamped. Internal EPO instructions make clear that a period of three days always elapses between the date-stamping of a decision and its despatch. If, for whatever reason, the EPO postal service is unable to despatch the decision on the date stamped, it returns the decision to the formalities section where it is given a new date, which again predates the date of actual despatch by three days. This practice ensures that the date of despatch is always stamped on the decision three days before it is actually despatched. This date is therefore very easy to ascertain, both for the EPO and the parties. It thus fulfils the need for strict legal certainty which the handing down of a decision must ensure.

9.2 In comparing written proceedings with proceedings giving rise to oral proceedings, the moment the formalities section hands over the decision to the EPO postal service corresponds to the closing of the debate during oral proceedings. These two events clearly mark the point in time up to which the parties can expect account to be taken of any further submission they might make, in that the decision-taking department will not invoke the relevant provisions of the Convention (Article 114(2) and Rule 86(3) EPC) to disregard such fresh matter as having been submitted late.

9.3 When a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it. This moment marks the completion of proceedings before the decision-making department. Once proceedings have been completed the decision-making department can no longer amend its decision. It must disregard any fresh matter the parties may submit to the EPO thereafter. Seeing that it is important for the parties to know at which point in time the decision-making process following written proceedings is completed, this point in time should be clearly indicated in the decision. The formalities section should also keep a register of the dates on which decisions are handed over to the EPO postal service to enable these dates to be ascertained at any time.

Order

For these reasons it is decided that:

The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department's formalities section.