J 0018/84 (Register of European patents - Entries in) 31-07-1986
Téléchargement et informations complémentaires:
1. Separate written declarations cannot be regarded as an "instrument of transfer" within the meaning of Rule 20(1) EPC if one (in the present case the declaration of acceptance) is sent only to the EPO (see Reasons, point 5.1).
2. The "decisions in respect of entries in the Register of European Patents" reserved under Article 20 EPC for the Legal Division include any applying Rules 20, 21, 22 and 61 EPC. Requests for entries must be submitted to the Legal Division once an adverse decision within the meaning of Article 107, 1st sentence, EPC seems likely (see Reasons, point 2). This applies mutatis mutandis to decisions applying Rule 19 EPC (see Reasons, points 6.3 and 6.4).
Register of European patents/ Entries in
Instrument of transfer
Signature on NCR (no carbon required) paper
Legal Division - Responsibility of
Summary of Facts and Submissions
I. On 3 November 1980 the appellant filed as sole applicant a European patent application in which he designated himself as the sole inventor. There followed various letters not relevant to the law at issue and in which Respondents I and II disputed the appellant's entitlement to be sole applicant and inventor. The application was published on 12 May 1982.
II. On 15 June 1982 the appellant and both respondents filed a "Designation of inventor" form signed by all three. In it they jointly designated themselves as the inventors and stated that the respondents were to be recorded as applicants. On 13 June 1982 two sums of DM 115 and one of DM 30 were paid, intended to cover fees for transfer, the licence issued to a specified company and a certified copy of the amendments.
III. On 7 September 1982 the respondents' representative filed the following documents:
(1) A new, only partly completed "Request for Grant of a European Patent" form dated 8 July 1982, giving on page 5 the appellant and both respondents as applicants and stating that the earlier application should be amended to show all three applicants, who were also the inventors and represented by the first-named applicant (Respondent I). Said page 5 of the form is an NCR (no carbon required) sheet bearing the signatures of all the parties in blueprint.
(2) A request under Rule 20 EPC that both respondents and the appellant be recorded as applicants (with reference made to a fee of DM 115 already paid).
(3) A request under Rule 19 EPC that both respondents be added to the existing designation of inventor naming the appellant.
(4) An authorisation for the respondents' representative, signed by Respondent I and making reference to Rule 100 EPC ("Appointment of a common representative").
IV. By communication of 28 September 1982 the EPO's Receiving Section asked the respondents' representative for the "original" of the instrument of transfer, as it only had a "copy". He answered that an NCR copy should be regarded as an original. The "original" was with the opposing party, who would not release it.
V. By letter of 5 October 1982, received on 7 October 1982, the respondents' representative filed a "Declaration of transfer" dated 24 September 1982, signed only by the appellant, requesting inter alia that the European patent application specified be transferred to the respondents and stating that he was no longer an applicant, that the respondents were now the sole applicants and that the declaration submitted constituted the instrument of transfer in due form. The respondents' representative further requested, without any further payment of fees, that the respondents be recorded as applicants and all three parties designated as inventors.
VI. By letter of 29 October 1982, received the following day, the appellant's representative submitted inter alia that the sole applicant and thus person entitled to act was the appellant, that the respondents were not entitled to be applicants or to act, that their representative's authorisation did not extend to the appellant and lastly that if the document (i.e. the "declaration of transfer") enclosed with the submission of 5 October 1982 were nonetheless considered to be a request in due form by the appellant for the assignment of his patent application he herewith withdrew that request.
VII. By letter of 2 November 1982, received the following day, the respondents' representative filed a "declaration of acceptance" dated 18 October 1982 signed by his clients declaring their agreement to take over the European patent application transferred to them. It is common ground between the parties that this "declaration of acceptance" was sent only to the EPO, and not to the appellant.
VIII. On 18 November 1982 the EPO's Receiving Section issued a communication transferring the European patent application to the respondents. Under Rule 20(3) EPC this transfer took effect on 3 November 1982.
IX. By letter of 25 November 1982 the appellant's representative requested that this transfer be rescinded. By letter of 17 February 1983 the Receiving Section replied giving its view of the legal position, namely that the request under Rule 20 EPC for the recording of a transfer had been signed by the other party's representative, and that the "declaration of transfer" complied with Article 72 and Rule 20 EPC. It did not mention the "declaration of acceptance", and gave the appellant 2 months to request an appealable decision.
X. This the appellant's representative did by letter of 11 October 1983, received the following day.
XI. On 17 January 1984, no further communication having been sent, the Legal Division issued a decision ruling that the transfer recorded by the Receiving Section communication of 18 November 1982 had been correct and refusing the request of the appellant's representative that it be rescinded. The Legal Division argued that the respondent's representative had validly filed a request within the meaning of Rule 20(1) EPC, and that an instrument of transfer within the meaning of that Rule also existed, since taken together the "declaration of transfer" (as the "offer") and the "declaration of acceptance" of 18 October 1982 received by the EPO (as the "acceptance") fulfilled the formal requirements for an instrument of transfer within the meaning of Rule 20(1) EPC.
XII. Meanwhile, the patent grant procedure proceeded as follows: On 2 May 1982 the European Patent Bulletin mentioned publication of the European search report. On 3 November 1982 the respondents' representative filed a request for examination, paying the appropriate fee. On 5 November 1982 the appellant's representative did likewise, and by communication of 18 November 1982 was informed that following the transfer effective as from 3 November 1982 the proceedings were now being conducted with the respondents' representative, that his own request for examination therefore had no basis and that the fee would be refunded. In response to an Examining Division communication of 7 June 1983 the respondents' representative on 17 October 1983 filed new claims and an amended description, on which basis the "Advance notice of the communication pursuant to Rule 51(4) and (5) EPC" was issued on 18 May 1984.
XIII. On 16 March 1984 the appellant's representative filed notice of appeal against the Legal Division's decision of 17 January 1984 (paying the fee for appeal at the same time), followed on 19 May 1984 by the statement of grounds. After an interim communication had been issued and submissions filed, oral proceedings were held on 22 April 1986, closing the appeal proceedings pending the present written decision.
XIV. The parties' written and oral submissions on the main question of the lawfulness of the transfer are summarised below. The appellant contends that the requirements under Rule 20 EPC for making the transfer were not met. Insofar as the "declaration of transfer" can be considered a request within the meaning of Rule 20(1) EPC this request was withdrawn by letter of 29 October 1982. Nor could this declaration be considered an instrument of transfer within the meaning of Rule 20(1) EPC. For one thing it was a unilateral declaration addressed only to the EPO and not to the appellant, for another it did not meet the requirements of 126 of the German Civil Code (GCC) for written submissions (in which connection Article 74 EPC referred to national law). The "declaration of transfer" had in any case been withdrawn by letter to the EPO of 29 October 1982 before the latter had even received the "declaration of acceptance". The respondents hold that the two declarations comply with the requirement under Article 72 EPC that they be made in writing. Unlike 126 GCC for example, Article 72 EPC does not stipulate submission of a written contract, merely that the parties attest in writing to the contract's existence; nor need these statements be combined in a single document. This applied also to the "instrument of transfer" pursuant to Rule 20(1) EPC. There was declarations which could however be separate. An assignment system not allowing parties to file the necessary comments separately was impracticable. Nor was the letter of 29 October 1982 purportedly withdrawing the "declaration of transfer" inconsistent with that declaration qua instrument of transfer, only qua request within the meaning of Rule 20(1) EPC for the recording of a transfer.
XV. At the end of the oral proceedings on 22 April 1986 the appellant's representative requested that the contested decision be set aside and the status quo ante restored by recording the appellant as sole applicant. The respondents' representative requested that
(1) as his main request, the appeal be dismissed, i.e. the existing entry of the two respondents upheld;
(2) failing that, both respondents and the appellant be recorded as joint applicants;
(3) the two respondents be added as further inventors to the existing designation of inventor (appellant alone), and
(4) one fee for registering a transfer be refunded. As part of his alternative request (2) above the respondents' representative filed a request under Rule 20 EPC, and a crossed cheque for DM 125 in respect of a fee he was paying as a precautionary measure although he considered it was not in fact due.
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. The first question - to be examined ex officio - is the respective responsibilities of the Receiving Section and Legal Division and whether each acted correctly.
2.1 Under Article 20 EPC the Legal Division is responsible inter alia "for decisions in respect of entries in the Register of European Patents". Not until the Munich Diplomatic Conference (see Minutes M/PR/II, point 118), was the Legal Division created as a department charged with the procedure (see in particular Articles 15, 20 and 106(1) EPC). The Conference did not however delimit its competence in respect of Register entries, which therefore necessitates interpretation of the Convention.
2.2 Article 127 and Rule 92(1) EPC might seem at first sight to indicate that the Legal Division is responsible for all entries within the meaning of Rule 92(1) EPC. However, its responsibility under Article 20 EPC "for decisions in respect of entries in the Register of European Patents" can in fact relate only to decisions directly concerning the entry itself, i.e. especially those on the registering of transfers under Rule 20 or 61 or of rights under Rules 21 and 22 EPC, for which - as Article 20 EPC makes clear - the Legal Division alone is competent.
2.3 Here a comparison of the Legal Division under Article 20 EPC with the Patent Administration Division under Article 8 of the Community Patent Convention (CPC) is appropriate, particularly as the latter is intended to act as a special department of the EPO under Article 143 EPC, supplementing the Legal Division. Originally, the Patent Administration Division's competence was expressed only in the negative terms of Article 8(1), 1st sentence, CPC, i.e. that it is "responsible for all acts of the European Patent Office relating to Community patents, in so far as these acts are not the responsibility of other departments of the Office". The 1975 Luxembourg Diplomatic Conference on the Community Patent then added a second - positive - clause whereby the Patent Administration Division is "in particular ... responsible for decisions in respect of entries in the Register of Community Patents" (see Records of the Conference, published by the General Secretariat of the Council of the European Communities, 1981, p. 248). Preparatory document Lux/77 (loc. cit., p. 211) states that the purpose of this additional positive clause is that the Division's competence "should be regulated in accordance with the pattern of the European Patent Convention...", a reference to the delimitations of responsibility contained in Articles 18 et seq. EPC (first paragraph of each). The tasks of the Patent Administration Division are also described under "Comments". From this it may be concluded that the intention behind the positively worded 2nd sentence of Article 8(1) CPC ("for decisions in respect of entries in the Register ...") is that the Division should serve in the other departments' stead. It is also worth mentioning that linkage of the EPC's Legal Division and CPC's Patent Administration Division (cf. Article 143(2) EPC) is possible and indeed was considered (cf. Minutes of the 10th meeting of the "Community Patent" Working Party, R/3282/73 (ECO 346, BC 28) of 8 February 1974).
2.4 The Legal Division's competence under Article 20 EPC as a "department charged with the procedure" within the meaning of Article 15 EPC certainly extends to the application of Rules 20, 21, 22 and 61 EPC. It does not however relate to all entries, but only to "decisions in respect of entries", i.e. decisions by which a party is or might be "adversely affected" within the meaning of Article 107, 1st sentence, EPC. The same conclusion may be drawn from the decisions taken at the Munich Diplomatic Conference, which not only established the Legal Division (Article 20 EPC) as a "department charged with the procedure" (Article 15 EPC) but also included it in other provisions of the Convention, initially and particularly in its Article 106(1). It is apparent from Articles 21(1) and (2) and 23(2) EPC that the Legal Division was conceived as a preliminary instance to the Legal Board of Appeal. This is borne out by the "proceedings before ... the Legal Division" for which Article 117(1) EPC provides and which may involve inter alia oral proceedings (Article 116 EPC) and taking of evidence (Article 117 EPC). The Legal Division may not take decisions without giving the parties an opportunity to present their comments (Article 113 EPC), and these decisions must comply with Rule 68 EPC.
2.5 It follows from all this that the Legal Division is not responsible under Article 20 for routine requests for entries where there is no difference of opinion between a party and the EPO. The President of the EPO is free to decide, as part of his administrative competence under Article 10(2)(a) and Rule 9(2) EPC, which department is responsible for handling entry requests which cannot adversely affect a party within the meaning of Article 107 EPC. Those involving differences of opinion not immediately resolvable, however, must be submitted to the Legal Division once the need arises for proceedings of the kind mentioned in point 2.4 above and which might involve an appealable decision.
2.6 The present case should thus have been referred to the Legal Division upon receipt of the letter of 29 October 1982 making it clear that the appellant did not agree to the transfer. The transfer nonetheless effected by the Receiving Section is therefore to be set aside as in breach of Article 20 EPC.
2.7 This procedural error is also clear from the fact that the appellant was replaced as applicant by the respondents against his will. Any such change must be preceded by an appealable decision, which itself cannot be implemented until it has become final and upon which any appeal has suspensive effect (Article 106(1), 2nd sentence, EPC). In the present case this would have meant that pending the Board of Appeal's decision the appellant would have remained the entitled applicant under Article 60(3) EPC with whom the proceedings were to be conducted, unless they were suspended or interrupted under Rule 13 or Rule 90 EPC respectively. The Legal Division should have regularised the procedural position. At the same time it could have issued an appealable decision that (in its opinion) the respondents should be recorded as applicants. However, the appeal's suspensive effect would have meant the appellant provisionally remaining the recorded applicant and thus entitled under Article 60(3) EPC to prosecute the application.
2.8 In view of these procedural errors the decisions of the Receiving Section and Legal Division are to be set aside, and the appeal fee refunded under Rule 67. The fact that the appeal is allowed only in part is no impediment to such refund.
3. Under Article 111(1), 2nd sentence, EPC, the Board can now either refer the case back to the Legal Division or take a decision itself. It opts for the latter course because the application of Rule 20 EPC raises wider problems of law.
4. The parties were clearly uncertain as to the requirements under Rule 20 EPC for registering a transfer, and no doubt the differences between European (Rule 20 EPC) and German law (30(3) of the German Patent Law) contributed to this uncertainty. Under German law evidence of transfer must be supplied in the form of a certified declaration by the transferor that he consents to the assignment, and a declaration by the transferee that he accepts it (cf. 30(3) of the German Patent Law and guidelines on assignment published in the "Blatt für Patent-, Muster- und Zeichenwesen" (Bulletin for Patents, Utility Models and Marks), 1981, p. 232 et seq.). European law on the other hand stipulates the filing of an "instrument of transfer" within the meaning of Rule 20(1) EPC, for which purpose an extract will suffice. This difference between German and European law is deliberate. The Chairman of the EC Working Party on Patents originally proposed the German system of "consent to assignment" (cf. proposals of 3 March 1961 for an Article 23), but the Working Party opted instead for an "agreement registration" system (EEC 3076/IV/62 of 22 May 1962, p. 42). The difference was perceived to be precisely that with the "consent to assignment" system no entry can be made without the consent of one of the parties, whereas that of "agreement registration" no longer requires evidence of that consent other than the agreement concluded (loc. cit., p. 44).
5. It is clear from the above that the decision on the main request (dismissal of the appeal/upholding of the registration of the respondents) or the alternative request (joint registration of all parties) depends only on whether the documents submitted as the "instrument of transfer" meet the formal requirements of Rule 20 EPC, in which connection it may be assumed - given the reference to Article 72 in Rule 20(2), 2nd sentence, EPC - that not only the "assignment" ("rechtsgeschäftliche Übertragung" - "cession") within the meaning of Article 72 EPC but also the "instrument of transfer" ("Übertragungsvertrag" - "acte de transfert") within the meaning of Rule 20 EPC "shall be made in writing and shall require the signature of the parties to the contract".
5.1 Even in conjunction with the "declaration of acceptance" the "declaration of transfer" fails to meet this requirement. Assuming that an exchnge of written declarations could fulfil the requirement that the "instrument of transfer" within the meaning of Rule 20 EPC be in writing, two separate declarations even if both are in writing and signed still do not constitute an agreement unless each has been sent to the other party. With the "declaration of acceptance" this is not the case: it was addressed and sent to the EPO alone. During the subsequent proceedings (after registration of the transfer) it did become known to the appellant's representative, and perhaps even to the appellant himself. However, even if it is held to constitute acceptance of the agreement and not merely a declaration addressed to the EPO, by the time it was received the appellant was no longer bound by the offer made with his "declaration of transfer". He and his representative had in the meantime made it quite clear in writing and by their behaviour that the appellant no longer considered himself party to that offer.
5.2 The appellant's request that the contested decision be set aside is thus justified by the substantive considerations set out under point 5.1 above and not simply for the procedural reasons given in point 2.6. The respondents' main request that the appeal be dismissed and the existing entry confirmed cannot therefore be granted.
5.3 However, nor can the Board grant the appellant's further request that he be reinstated as sole applicant, because it must allow the respondents' alternative request that all the parties be recorded as joint applicants. This request is supported by their joint declaration (cf. point III.1 above), which in form and content constitutes an "instrument of transfer" within the meaning of Rule 20(1) EPC, notwithstanding the NCR paper used to produce it. If several copies of a single agreement are produced simultaneously using such paper each copy is an "original" within the meaning of Rule 20(1) EPC. An NCR signature is an original signature; it is produced by the hand's pressure in signing. The declaration's effective date within the meaning of Rule 20(3) EPC is that of its receipt (cf. point 7 below). This means that the procedural acts performed during the examination proceedings by the professional representative appointed by all the parties as their common representative (cf. III.4 above) become effective with the present decision, and that the examination proceedings can be resumed with a communication under Rule 51(4) EPC.
6. The Board can accede to the request of the respondents' representative that his clients be added to the existing designation of inventor; the requirements under Rule 19 EPC are met, and the Board is also competent to order this correction.
6.1 The joint submission of 15 June 1982 by all the parties (cf. point II above) created the preconditions for a correction under Rule 19 EPC. Nor is this in dispute, as was established in the oral proceedings.
6.2 The Board's competence to order the correction derives under Article 111(1), 2nd sentence, EPC from that of the Legal Division, which because the matters are related is itself competent to decide on whether to register applicants who also seek to be recorded as inventors.
6.3 The Legal Division is anyway competent also for decisions applying Rule 19 EPC. The comments made above (cf. point 2.4) about decisions applying Rule 20 EPC apply mutatis mutandis, although here again routine corrections involving no dispute are a matter for the departments to which the President of the EPO allocates this task. A further point to note is that Rule 19 EPC continues to apply even after the opposition phase, whereas under Rule 61 Rule 20 EPC does not.
:6.4 The respective areas of responsibility of Receiving Section and :6.4 The respective areas of responsibility of Receiving Section and Legal Division in matters of designation of inventor do however require delimitation, particularly as the Legal Board of Appeal has already addressed this question (J 08/82, OJ 4/1984, p. 155 et seq., Reasons for the Decision, point 2). The examination of an initial designation of inventor complying with Article 81 EPC falls exclusively to the Receiving Section as one of its formalities examination responsibilities under Articles 16 and 91 EPC. However, once entries begin in the Register of European Patents - which under Article 127, 2nd sentence, EPC coincides with publication of the European patent application - the Legal Division may be competent for disputed corrections.
7. The respondents request that a fee under Rule 20(2) EPC for registering a transfer be refunded. They have filed three requests for entry altogether and paid a fee twice. The first fee payment was made on 13 June 1982 at the rate of DM 115 then in force (cf. point II above), and the respondents' representative availed himself of it (cf. point III.2 above) for his request of 7 September 1982 (which was the same as his alternative request now granted) that all three parties be recorded. No fee was paid in respect of the request of 5 October 1982 (cf. point V above) that only the respondents, and not the appellant, be recorded (which was the same as his main request now refused). It may be assumed that Receiving Section and Legal Division allowed the fee paid for the first request to cover the second as well. They acted correctly, for at that time the requests were not qualified as main and alternative ones. During the proceedings however it became clear that the earlier request was the second-best and the later one the preferred solution. In the rare event of a request within the meaning of Rule 20(2) EPC comprising a preferred and an alternative request, a single fee suffices. In allowing the respondents' alternative request the Board of Appeal is acting on the request of 7 September 1982 (cf. point III.2 above) effective within the meaning of Rule 20(3) EPC. The fee of DM 125 paid as a precautionary measure in the oral proceedings in respect of the renewed request is therefore to be refunded.
8. On 13 July 1982 further payments of DM 115 and DM 30 were made (cf. point II above). However, they have no purpose within the meaning of Article 7 of the Rules relating to Fees, and are therefore unused and to be refunded.
ORDER
For these reasons, it is decided that:
1. The recording of the transfer to the respondents as applicants effected by the Receiving Section on 18 November 1982 in respect of European patent application No. 80 106 734.9, and the decision of the Legal Division of the European Patent Office dated 17 February 1984, are set aside.
2. The respondents and appellant are to be entered as joint applicants in the Register of European patents, which transfer has had effect vis-à-vis the European Patent Office since 7 September 1982, in accordance with Rule 20(3) EPC. The examination proceedings may be resumed by a communication under Rule 51(4) EPC to the professional representative of Respondent I appointed by the applicants as their common representative.
3. The respondents are to be added as further inventors to the existing designation of the inventor.
4. The appeal fee of DM 630 is refunded.
5. One fee of DM 125 for registering a transfer, and payments of DM 115 and DM 30, i.e. a total of DM 270, are refunded.