J 0007/20 03-09-2021

Framework of the appeal proceedings

I. The appeal is against the decision of the Legal Division of 20 February 2020 to reject the request of Easy Sanitairy Solutions B.V. that the proceedings which the Enlarged Board of Appeal ("the Enlarged Board") concluded on 4 February 2019 by rejecting the petition be deemed interrupted.

II. Appellant Easy Sanitairy Solutions B.V. ("the proprietor") requests that the appealed decision be set aside and that the proceedings before the Enlarged Board be deemed interrupted as of 3 February 2019. If this request is not allowed, the proprietor requests referral of the three questions filed on 25 May 2021 to the Enlarged Board. Furthermore, the proprietor seeks clarification on whether the opponents are parties to these appeal proceedings.

III. Respondent Group Nivelles NV ("opponent 1") requests that the appeal be dismissed, while seeking confirmation that practical circumstances preventing a party and/or its representative from meeting a time limit or arriving at oral proceedings on time, travel problems in particular, do not qualify as "legal incapacity" within the meaning of Rule 142 EPC. Furthermore, opponent 1 requests that the proprietor's request for referral to the Enlarged Board of the three questions filed on 25 May 2021 be rejected.

IV. Respondent Kessel AG ("opponent 2") requests that the appealed decision be set aside and that the proprietor's request that the proceedings before the Enlarged Board be deemed interrupted as of 3 February 2019 be allowed.

The relevant procedural background

V. The proprietor was granted a European patent subsequently opposed by opponents 1 and 2. The Opposition Division revoked the patent.

VI. The proprietor appealed the revocation decision, and requested maintenance of the patent. Opponents 1 and 2 requested dismissal of the appeal. The proprietor replaced its authorisation to an association of representatives, NLO, with that to an individual of the association, Mr. Clarkson ("the representative"). Technical Board of Appeal 3.2.03 ("the Technical Board") dismissed the appeal.

VII. The proprietor petitioned for review of the dismissal decision and requested remittal of the case to the Technical Board with the instruction to allow the case to be heard before the Opposition Division. The proprietor argued its right to be heard had been violated in oral proceedings before the Technical Board.

VIII. The Enlarged Board summoned the proprietor to oral proceedings. According to the accompanying preliminary views, the petition had to be rejected as clearly inadmissible and clearly unallowable.

IX. In response, the proprietor argued its petition case further and announced the representative's intention to attend the hearing. Opponent 2 filed observations.

X. Oral proceedings were scheduled to start at 10:30 hours on 4 February 2019. The representative did not appear. In the course of the day, beginning at 10:22 hours, employees of his association informed the Enlarged Board, by telefax and telephone, that he would not attend due to cancelled flights; there was however no request for postponement of the hearing.

XI. The Chair opened the oral proceedings at 12:30 hours and closed them at 12:48 hours, after having announced the unanimous rejection of the petition as clearly inadmissible (for want of a Rule 106 EPC objection).

XII. Later that day, the representative informed the Enlarged Board by telephone that he had tried to contact Mr. Cremona by telephone the whole day, and had also sent him an email, unaware of Mr. Cremona's recent retirement from the duty as the Enlarged Board's registrar. The representative's office then forwarded to the Enlarged Board the email, originally sent at 7:53 hours, which indicated his non-attendance at oral proceedings due to cancelled flights, and his wish to have the hearing rescheduled.

XIII. In response to the minutes of the oral proceedings, the proprietor detailed a series of unfortunate events labelled as force majeure - inter alia heavy snow, cancelled flights and the sudden retirement of the registrar - that prevented the representative from attending the hearing and effectively communicating with the Enlarged Board. The proprietor considered the inability of the representative to constitute legal incapacity of the proprietor under Rule 142(1)(a) EPC. The proprietor requested that the Enlarged Board reconsider the petition, deem any decision as not having been taken and reschedule a hearing.

XIV. By communication, the registrar of the Enlarged Board explained that the email of 7:53 hours sent to the retired Mr. Cremona's personal mailbox could not be brought to the attention of the Enlarged Board and that, also, this was not an official means of communication and thus lacked legal force. Furthermore, the requests could not be acceded to since the matter of the Enlarged Board's decision became res judicata as soon as the decision was announced.

XV. In response, the proprietor argued its case further and requested reconsideration. Opponent 1 submitted its view on the concept of legal incapacity in particular.

XVI. After the Enlarged Board had dispatched its decision rejecting the petition for review in writing, the proprietor directed itself to the Legal Division and "request[ed] interruption of the proceedings" with effect from the day prior to the hearing before the Enlarged Board, while referring to its last two submissions to the Enlarged Board (mentioned in points XIII and XV above).

XVII. Following the exchange of two communications from the Legal Division and two more submissions by the proprietor, the Legal Division issued the appealed decision.

XVIII. On the basis of the facts put forward in those five submissions (dated 25 February, 6 May, 10 July, 6 August and 5 November 2019), the proprietor argued, in the statement of grounds of appeal, mainly as follows.

In the absence in the EPC of a definition of "legal incapacity", the general principles applicable in the individual member states must be taken into account to fill the void (Article 125 EPC). As shown in the two memoranda, the provisions in Dutch and German law corresponding to Rule 142(1)(c) EPC are interpreted narrowly. However, they are explicitly balanced against other provisions relating to, for instance, postponement of a hearing and reinstatement after a decision by default. Rule 142(1)(c) should thus be interpreted broadly.

It is wrong to presume that incapacity must be persistent. Significant duration in view of the proceedings under consideration would be a more appropriate criterion.

In the current case, the representative's incapacity lies primarily with the sudden retirement of the one person designated within the Boards of Appeal to communicate with him, the Enlarged Board's registrar. The Legal Division should have considered the whole situation by which the proprietor's representation was effectively impeded by a lack of effective communication.

Any situation that prevents a party from presenting its case before the Enlarged Board, the review by which is the last legal remedy available, represents an obstruction of the legal process before a body which itself has recognised the binding nature of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms of 4 November 1950 (ECHR). The impediment of the representative de facto led to a dead-end in terms of legal remedies. Thus, the proprietor was deprived of its last right to be heard. This amounts to legal incapacity.

XIX. Opponent 1 responded chiefly as follows.

As opposed to the original case on legal incapacity of the proprietor, the appeal concerns legal incapacity of the representative, and should be dismissed for this reason alone.

At any rate, legal incapacity relates not to external circumstances forming a hindrance for the representative, but to the representative himself or herself as a person. The proprietor is effectively arguing that a missed appointment is sufficient proof that the representative was incapacitated. If so, every representative who is late for oral proceedings could request that these be held again.

Since neither Rule 142 EPC nor any other remedy under the EPC applies to the current case, the travel problems were at the proprietor's risk.

XX. In its preliminary opinion, the Legal Board of Appeal ("the Legal Board") tended not to view the appeal case as new. It interpreted "legal incapacity" as depending on the mental state of the representative, and found the facts of the current case to be completely different in nature.

XXI. In the oral proceedings of 11 May 2021, the proprietor announced that, alternatively to its interruption request, it would file a request for referral of a question to the Enlarged Board. In the course of the hearing, the parties were all discussing Rule 142(1)(c) EPC. There was disagreement about its applicability, more precisely, whether it could and should be interpreted broadly or by analogy to the facts of the case. In sum, the parties pleaded as follows.

XXII. According to the proprietor, Rule 142(1)(c) EPC applies to the facts of the case when broadly interpreted. At any rate, the events listed in it, death or legal incapacity of the representative, are not exhaustive and were never intended to be. Unlike in G 1/97, it lies within the scope of the EPC to remedy this manifest injustice. Rule 142(1)(c) was consistently interpreted narrowly in the case law only because there was no need to interpret it otherwise.

If, alternatively, there is a lacuna in the EPC, Article 125 EPC should be applied to fill it, taking into account related Dutch and German legal principles.

In any case, Rule 142(1)(c) EPC should be applied by analogy. It is quite telling, as stated in T 1807/05 in the context of oral proceedings held by videoconference during the pandemic, that standard board practice is to adjourn the proceedings if no satisfactory Internet connection can be established.

The EPO must act in good faith and has a duty to warn parties of any impeding loss of rights, as prescribed in J 13/90. In the current case, it was reasonable to expect the Enlarged Board's registrar to ask about a request for postponement of oral proceedings when in contact with employees of the representative's association.

XXIII. Opponent 1 asserted that only two events could be the basis for interruption under Rule 142(1)(c) EPC, death or legal incapacity of the representative. The legislature had left the interpretation to be carved out at the European level. This had indeed taken place; legal incapacity relates to mental state, i.e. something serious, more than being ill, wholly unrelated to external circumstances like those in the current case. This definition of "legal incapacity" relating to mental state is acceptable and workable. In the view of opponent 1, there is no need to go further.

XXIV. While recalling its own activities to have this patent revoked, opponent 2 argued as follows.

The matter had become purely procedural, relating to events that could happen again and again, potentially affecting its own representatives. There was thus a concern about the future.

Because of the snowfall in the run-up to the hearing, more than 240 flights to and from Munich were cancelled. It was even difficult to get home from work by car. Hence, it was surprising how the Enlarged Board acted.

When the applicant or proprietor dies or is legally incapacitated, the representative must apply for an interruption (Rule 142(1)(a) EPC). If the sufferer is instead the representative, there is no application requirement (Rule 142(1)(c) EPC). This illustrates that everything relies on the representative.

Despite the intention with Rule 142(1)(c) EPC to provide an interruption when somebody can not act, the inability seen in the current case is not mentioned. This gap in the EPC should be filled through either a broad or an analogous interpretation of that rule.

XXV. At the end of the discussion, the Chairman announced that the proceedings would be continued in writing and

that the proprietor was allowed two weeks from the date of those oral proceedings to file the question it envisaged for referral to the Enlarged Board.

XXVI. In the written proceedings following the oral proceedings of 11 May 2021, the proprietor filed questions for referral to the Enlarged Board in case the interruption request was not allowed. According to the proprietor, there is a point of law of fundamental importance for which a referral would appear justified and necessary. In particular, the precise scope of Rule 142 EPC and the ability of the EPC to deal with aspects of force majeure not strictly related to the observation of time limits appear to be unclear. The three questions filed read as follows.

Q1: Is the meaning of the terms "death or legal incapacity" in Rule 142(1)(c) EPC restricted to the situations in which the representative concerned is actually declared dead or in an unfit mental state of persistent nature or are the terms to be interpreted to include other e.g. analogous situations in which the representative concerned is unable to do the work required of such representative at the material time due to force majeure, whereby the legal representation of a party is impeded?

Adjacent to the first question, the proprietor pleaded, in sum, along these lines: The EPC gives no clear definition of "death or legal incapacity". It is questionable whether the "reasonable basis" referred to in J 900/85 for developing the EPO's own standards is the only basis for interpretation of this term. Recourse to supplementary means of interpretation under Article 32 of the Vienna Convention on the Law of Treaties of 23 May 1969 (VCLT), in addition to the travaux préparatoires of the EPC, appear appropriate since the term is both ambiguous and obscure, and a narrow interpretation could lead to manifestly absurd or unreasonable results. Interpretation by analogy appears appropriate.

Q2: Are the grounds for interruption of proceedings that are listed in Rule 142(1) EPC intended to be exhaustive? If not exhaustive, will proceedings before the European Patent Office be interrupted in a situation where, through no fault of a party, that party's legal representation is impeded due to force majeure?

In relation to the second question, the proprietor argued mainly that the wording of Rule 142(1) EPC is imperative but not in itself exhaustive and that the travaux préparatoires state clearly that there may be numerous reasons for interruption.

Q3: If the terms "death or legal incapacity" are interpreted restrictively and the grounds for interruption of proceedings listed in Rule 142(1)(c) EPC are exhaustive, taking into account amongst others the principle of due process as protected in Article 6 of the European Convention on Human Rights, what remedies do exist under the EPC in a situation where, through no fault of a party, that party's legal representation is impeded due to force majeure and a loss of rights ensues without a time limit vis-à-vis the European Patent Office having been missed?

Regarding the third question, the proprietor pleaded in particular as follows. The EPC provides for numerous remedies where, in spite of all due care taken, an applicant or a proprietor is unable to observe a time limit (Article 122 and Rule 134(5)). This is evidence of an intended robust system with adequate safeguards meeting the obligations of the member states. The current case is, however, evidence that fundamental rights such as the right to a fair trial can be lost without a time limit having been missed.

Given the fundamental importance and the judicial nature of the review procedure under Article 112a EPC and Article 32 of the Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994, any absence of suitable provisions to deal with circumstances of force majeure appears to be in conflict with Article 6(1) ECHR.

In the unlikely event that no remedy is provided under Rule 142 EPC, it remains to be determined whether any other provision applies such as Article 125 EPC. If no such provision exists elsewhere under the EPC there may be a G 1/97-situation, i.e. a lacuna and a need for an appeal to the legislature. Consideration and affirmation by the Enlarged Board of such a shortcoming would then appear appropriate.

XXVII. In response, opponent 1 pleaded essentially as follows.

The EPO provides no remedy for missing oral proceedings due to unforeseen events. The legislature has chosen a procedural system with some repair mechanisms, not solutions to each and every problem. These mechanisms, e.g. further processing and re-establishment (Articles 121 and 122 EPC), relate to time limits (and failure to observe them), and they are subject to fee payment and other conditions. Furthermore, and in contrast, not attending oral proceedings has no direct legal consequences, which are instead brought about by the EPO's decision, taken after the merits of the case have been discussed with the parties in written proceedings. Oral proceedings are in fact subject to a lex specialis: if a party duly summoned does not appear, oral proceedings may continue in its absence (Rule 115(2) EPC and Article 14(4) Rules of Procedure of the Enlarged Board of Appeal, RPEBA). Continuation of oral proceedings in the absence of a duly summoned party is not in conflict with Article 113(1) EPC or Article 6(1) ECHR.

Rule 142(1)(c) EPC is not a suitable legal basis here and leaves no room for the interpretation sought by the proprietor. It provides for the very drastic measure of bringing the entire proceedings to a halt. Not simply because a representative misses a time limit but only because the person concerned is no longer capable of representing parties. This is confirmed by Rule 142(3) EPC, under which the proceedings shall be resumed when the EPO has been informed of the appointment of a new representative. On the representative's own account of the events of 4 February 2019, he repeatedly attempted to contact the EPO by telephone. Apparently, he was in a suitably fit state to represent the proprietor at that time. If being hindered by unforeseen events triggered the mechanism of Rule 142(1)(c), absurd scenarios could follow, e.g. when a representative is caught in a traffic jam for an hour.

No decision by the Enlarged Board is required since the Legal Board is in a clear position to decide itself based on the normal meaning of existing EPC provisions, and on existing case law. Therefore, and to avoid prolonged uncertainty caused by a referral, the request for referral should be rejected.

As regards Q1, opponent 1 argued that "death or legal incapacity" are intended only for very exceptional situations relating to the legal capacity of the person of the representative, not as a generous and general excuse for cases where re-establishment (Article 122 EPC) is available, or even when it is not.

Regarding Q2, opponent 1 stressed that interruption is an exception to the general system. Therefore, Rule 142(1)(c) EPC must be interpreted narrowly. It follows that the list in this provision is exhaustive.

Concerning Q3, opponent 1 argued as follows. The EPC does not conflict with the ECHR by allowing oral proceedings to continue in the proprietor's absence. Furthermore, the non-attendance of the proprietor was not punished by a consequential loss of rights. The proprietor's loss of rights was caused by the Enlarged Board's decision, which was based on grounds on which the proprietor had already had an opportunity to comment. Further still, the question is much too broad.

XXVIII. In the oral proceedings of 3 September 2021, the proprietor, in addition to its previous submissions, pleaded essentially as follows.

The way oral proceedings are dealt with here and in the future, in particular whether appropriate safeguards are applied or put in place, is a point of law of fundamental importance.

The latest submission by opponent 1 is compelling and interesting. Still it fails to explain why, in this case, there would be no point of law of fundamental importance and no need to hear the Enlarged Board. While in its submission the legal situation is in effect painted as an acte clair, contradictions appear. Opponent 1 suggests that Q1 is easily answered in that "death and legal incapacity" should be interpreted restrictively and, with regard to Q2, that the list in Rule 142(1)(c) EPC is exhaustive. Yet, opponent 2 would admit "coma" as falling within the scope of this provision.

XXIX. In the same oral proceedings, opponent 1, further argued mainly as follows.

Coma is just an example of a state of mind that could qualify as "legal incapacity" under Rule 142(1)(c) EPC. Rules providing exceptions do not have to say "exclusive". On the contrary, the nature of a closed list of exceptions is exclusivity. Being drunk is not comparable, as stressed in the written submissions.

XXX. At the end of the oral proceedings of 3 September 2021, the Chairman announced the Legal Board's decision.