Delta Patents

J 23/14 - Pendency revisited: the 6-month period for paying the renewal fee with an additional fee

Delta Patents Patent Law -


Just after the Guidelines explicitly indicated that a patent application is still pending for the purpose of filing a divisional until the expiry of the 6-month period for paying the renewal fee (even if that fee is not paid), T 1402/13 ruled that the deemed withdrawal of a patent application occured if the renewal fee was not paid at the due date - and that the patent application was thus not pending in the 6-month period if the fees were ultimately not paid (see our earlier blog). Shortly after T 1402/13, R.51(2) was amended (per 1/1/2017) for clarification by addition of a last sentence "The legal consequence laid down in Article 86, paragraph 1, shall ensue upon expiry of the six-month period." The current J-decision addresses the topic again, and refers to the EPC1973 situation, the explanatory notes of EPC2000's drafting, the distinguishing T 1402/14, R.51(2) as amended per 1/1/2017, and EPO form 2522, which was sent to the party in the present case and clearly states that a patent application is deemed withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee. This J-decision concludes as follows: Notwithstanding the wording of Article 86(1) EPC 2000 and Rule 51 EPC (in the version in force until 31 December 2016), for the sake of the protection of legitimate expectations of the users of the European patent system, the Board holds that a patent application is deemed to be withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee under Rule 51(2) EPC, in accordance with the jurisprudence that prevailed before decision T 1402/13. The current decision addresses whether the loss of rights occured due to the missing of a period -as that is a prerequisite for re-establishment-, when the period that led to the loss of rights expired, and also when the removal of the cause of non-compliance occured.

Summary of Facts and Submissions

I. The appellant (applicant) contests the decision of the Examining Division dated 4 July 2014 rejecting its request for re-establishment of rights concerning European patent application No. 09 736 867.4, which was based on international application WO 2011/029482 filed on 14 September 2009. The international application entered the European phase on 20 March 2012.

II. The renewal fee for the fourth year - which is the subject of these proceedings - fell due on 30 September 2012. The six-month time limit pursuant to Rule 51(2) EPC for paying the renewal fee with an additional fee expired on 31 March 2013. By communication dated 5 November 2012, the European Patent Office (EPO) sent a notice drawing attention to the non-payment of the renewal fee for the fourth year and to Rule 51(2) EPC to the appointed European representative. By communication dated 6 May 2013, the EPO sent a notice of loss of rights pursuant to Rule 112(1) EPC to the appointed European representative.

III. By letter dated 4 June 2013 and received at the EPO on the same day, the European representative requested re-establishment of rights pursuant to Article 122(1) EPC in respect of the time limit for payment of the renewal fee for the fourth year with the additional fee. The renewal fee for the fourth year, the additional fee and the fee for re-establishment were also paid on 4 June 2013.

IV. By the decision now contested, the Examining Division rejected the request for re-establishment of rights. It came to the conclusion that the request was admissible but not allowable because it had not been proven that the appellant itself, its European representative and its US patent attorneys had exercised all due care required by the circumstances to observe the time limit.

V. On 1 September 2014, the appellant filed a notice of appeal and paid the appeal fee. The statement setting out the grounds of appeal was filed on 21 October 2014.

VI. As far as they are relevant for the Board's decision, the appellant's submissions can be summarised as follows:

The international application led to a group of national applications in Australia, Brazil, China, India, Japan, Korea and the United States. Whereas all these applications were successfully entered into the appellant's docketing system IPENDO, the European application in question was "inadvertently, inexplicably and unintentionally" not uploaded into this system.

Concerning IPENDO it was submitted that this system, which served both as a docketing reminder system and an annuity payment service, contained a comprehensive storehouse of information regarding the appellant's pending intellectual property matters, which amounted to several thousand patent and trademark matters. One "standard practice" of IPENDO was to send periodic reminders to the appellant regarding upcoming annuities due, including annuities for patent applications pending before the EPO. Because the system was unaware of the existence of the European application in question the system failed in the present case.

The appellant further submitted that, during the second half of 2012 and the first quarter of 2013, its patent and trademark matters had been transferred to a new docketing system called "Foundation IP (FIP)", which was used by its new US patent attorneys Kacvinsky Daisak PLLC. Later annuities were handled by a new outside annuity service (Computer Packages, Inc. (CPI)). Since the application in question had never been added to IPENDO it was neither transferred to FIP nor to CPI. The appellant also submitted that, despite these changes, at the time the renewal fee was due as well as at the time the annuity grace period expired, the responsibility for payment of annuities still remained with IPENDO.

VII. In a communication issued together with a summons to the oral proceedings, the Board drew attention to the jurisprudence of the boards of appeal according to which the application of "all due care" requires the setting-up of a "cross-checking system". It was also emphasised that the Board was of the preliminary opinion that the existence of such a system within the appellant's internal organisation has not been proven.

VIII. In reaction to this, the appellant provided more details to its practice of uploading data to IPENDO, as follows:

Once its patent attorney submitted documents relating to a newly filed application, one of three persons in charge of patents within the appellant's company entered this data into IPENDO and one of the other two persons compared the integrated data with the document submitted by the patent attorney.

The appellant further specified that, by email dated 9 November 2012, its European representative not only informed the US representative that the time limit for paying the renewal fee for the fourth year with surcharge would expire on 31 March 2013 - as submitted in writing - but at the same time, i.e. 9 November 2012, it also sent a copy of this email directly to the appellant. Since this email had been answered neither by the appellant nor by its US representatives, the European representative sent two further emails dated 7 and 20 March 2013 solely to its US colleagues, asking for a confirmation of receipt. The US representatives finally replied on 20 March 2013: "Received!!!".

IX. The appellant requested that the decision under appeal be set aside and that the request for re-establishment of rights in respect of the time limit for paying the renewal fee for the fourth year with surcharge be allowed.

X. Oral proceedings were held on 15 December 2016.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 EPC and Rule 99 EPC and is admissible.

2. Admissibility of the request for re-establishment of rights

2.1 According to Rule 136(1) EPC a request for re-establishment of rights under Article 122(1) EPC shall be filed within two months of the removal of the cause of non-compliance with the period, which is normally the date on which the person responsible for the application becomes aware of the fact that a time limit has not been observed (cf. J 27/90, OJ EPO 1993, 422, 426), but at the latest within one year following the expiry of the unobserved time limit.

2.2 On 5 November 2012 the Office sent a communication (EPO Form 2522) to the appellant's European representative informing him of the non-payment of the renewal fee for the fourth year under Rule 51(1) EPC and the possibility to validly pay the renewal fee together with the additional fee within the six-month period following the due date. This communication also comprised the following information: "If the renewal fee and the additional fee are not paid in due time, the European patent application shall be deemed to be withdrawn (Art. 86(1) EPC)."

On 6 May 2013, in another communication, the appellant's European representative was informed that the time limit pursuant to Rule 51(2) EPC had also been missed and that the application was thus deemed to be withdrawn. The request for re-establishment of rights was filed on 4 June 2013.

Thus, in the present case, the decisive question is whether the cause of non-compliance was already removed with the receipt of the communication of 5 November 2012 - in which case the request for re-establishment filed on 4 June 2013 would have been late filed - or only with the communication sent out on 6 May 2013. In this case the request for re-establishment of rights dated 4 June 2013 would have been filed in due time.

2.3 Article 122(1) EPC is worded such that it is applicable only where the non-observance of the time limit in question has the direct consequence of a loss of a right or of a means of redress. Thus, according to established jurisprudence, re-establishment of rights can be granted only with respect to the time limit pursuant to Rule 51(2) EPC for paying the renewal fee with an additional fee.

This jurisprudence is based on the view that the non-payment of the renewal fee by the due date pursuant to Rule 51(1) EPC does not result in a loss of rights but that the direct consequence of a loss of rights occurs on expiry of the time limit under Rule 51(2) EPC if it has not been observed. This is in line with the finding of the Enlarged Board of Appeal in its decision G 1/90 (OJ EPO 1991, 275) that where the EPC deems the application to be withdrawn, "the loss of rights occurs on expiry of the time limit that has not been observed" (point 6 of the Reasons). It is also in accordance with the established jurisprudence that the provision on the re-establishment of rights only applies if the applicant has failed to observe a time limit within the meaning of Article 122(1) EPC but not if he has failed to observe a due date such as the due date for paying the renewal fee within the meaning of Article 86(1), first sentence, and Rule 51(1), first sentence, EPC ("Fälligkeit" in the German version and "échéance" in the French version).

2.4 However, the board is also aware of decision T 1402/13 of 31 May 2016 which held that, whereas under Article 86(3) EPC 1973 the loss of rights did not occur before the additional period of six months had elapsed, under the present Article 86(1) EPC 2000 an application was deemed to be withdrawn if the renewal fee was not paid in due time pursuant to Rule 51(1) EPC. The Board in that case further stated that the due date according to Rule 51(1) EPC for paying the renewal fee was "not a time limit in the narrow sense of the word" (point 4.4.1) and that Rule 51(2) EPC provided for a remedy, namely the possibility that a deemed withdrawal could be reversed if the annual fee and the additional fee were paid within six months after the due date (point 4.4.3. of the Reasons).

2.5 This finding in decision T 1402/13 implies that restitutio in integrum in respect of the time limit specified in Rule 51(2) EPC would no longer be admissible since, according to the reasoning of said decision, non-compliance with this time limit does not have "the direct consequence of causing a loss of rights" as required by Article 122(1) EPC.

However, this issue has been clarified in the amended version of Rule 51(2) EPC resulting from the decision of the Administrative Council of 14 December 2016 (CA/D 17/16, OJ EPO 2017 A/02; see also the arguments given in CA/99/16). A second sentence has been added to said Rule which reads as follows: "The legal consequence laid down in Article 86, paragraph 1, shall ensue upon expiry of the six month period."

Although this new provision only applies as of 1 January 2017, it clearly confirms that - despite the wording of Article 86(1) EPC 2000 (see CA/99/16, esp. paragraphs 30 and 31, and the Basic proposal for the revision of the European Patent Convention (document MR 2/00), p. 77) - it was not the intention of the legislator to cancel re-establishment of rights as a mean of redress in such cases.

Hence, for the sake of the protection of the legitimate expectations of the users of the European patent system, who must be able to rely on a communication sent by the EPO (EPO Form 2522, which was sent to the party in the present case, clearly states that a patent application is deemed withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee under Rule 51(2) EPC. see point 2.2 above), the Legal Board considers it appropriate not to diverge from the jurisprudence that prevailed before decision T 1402/13.

2.6 Accordingly, the request for re-establishment of rights which reached the EPO on 4 June 2013 was filed in due time. The necessary acts required under Rule 136(1) and (2) EPC, i.e. payment of the renewal fee for the fourth year with surcharge, payment of the fee for re-establishment and submission of the grounds for re-establishment, were also performed in due time. The appellant's request for re-establishment of rights is therefore admissible.

3. Allowability of the request for re-establishment of rights.

3.1 Under Article 122(1) EPC, an applicant for a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO, which has the direct consequence of causing a loss of rights, shall, upon request, have his rights re-established.

In considering whether all due care has been taken, the circumstances of each case must be considered as a whole (cf. T 287/84, OJ EPO 1985, 333, 338, point 2 of the Reasons; J 1/07 of 25 July 2007, point 4.1 of the Reasons). The requirement of due care must be judged in the light of the situation existing before the time limit expired (cf. T 667/92 of 10 March 1994, point 3 of the Reasons; T 381/93 of 12 August 1994, point 3 of the Reasons; J 1/07 of 25 July 2007, point 4.1 of the Reasons).

3.2 As the Examining Division correctly pointed out, this duty applies first and foremost to the applicant itself and, by virtue of the delegation implicit in his appointment, to the applicant's professional representatives (cf. J 3/93 of 22 February 1994, point 2.1 of the Reasons; J 17/03 of 18 June 2004, point 5 of the Reasons; T 1401/05 of 20 September 2006, point 13 of the Reasons). Therefore the Board intends to consider first the responsibility of the applicant.

3.2.1 It was already emphasised in the contested decision that the appellant itself had failed to submit sufficient evidence as to whether independent checks or monitoring were foreseen in the organisation of its company making sure that all application data had been entered correctly in the annuity payment system (IPENDO) and that mistakes such as happened in the present case were avoided.

3.2.2 Indeed, according to the established jurisprudence of the boards of appeal, at least in a very big firm where a large number of dates have to be monitored at any given time - as it is the case here - it must normally be expected that an independent and effective system of cross-checks is foreseen in order to counterbalance errors (cf. for example T 223/88 of 6 July 1990, point 4 of the Reasons, explicitly with respect to the requirement of a cross-checking system within the internal organisation of the applicant company; T 1764/08 of 2 December 2010, point 17 of the Reasons; T 36/97 of 21 October 2001, points 14, 15 of the Reasons). In other words, re-establishment in respect of a time limit can only be granted if the reason why it was missed appears to have been an isolated error which occurred in spite of the existence of such a cross-checking system.

3.2.3 In the present case, the initial mistake was that the application in suit was not uploaded into the docketing and annuity payment system (IPENDO), initially used and stewarded by the appellant themselves. According to the appellant's more detailed submissions during the oral proceedings before the Board, a cross-check was only performed in so far as the data already entered in IPENDO were compared with documents submitted by the appellant's patent attorneys.

3.2.4 Such a check is obviously not suitable for detecting missing data in the IPENDO system and therefore cannot be considered as an independent and effective cross-checking system as required by the jurisprudence of the boards of appeal. Thus the mistake that the application in suit was not uploaded into IPENDO cannot be considered as an isolated error in a normally satisfactorily working monitoring system.

3.2.5 Since, according to the appellant's submissions, it was a "standard practice" of IPENDO to send "periodic reminders", the system would have reminded the appellant of both expiry dates. Therefore, the fact that IPENDO lacked information about the application in suit not only caused the non-payment of the renewal fee on the due date pursuant to Rule 51(1) EPC but also has to be seen as - at least one - reason why the appellant failed to pay the renewal fee and the additional fee in due time pursuant to Rule 52(2) EPC. Thus, in this respect it is not relevant that said mistake occurred long before the renewal fee pursuant to Rule 51(1) EPC fell due.

3.2.6 The appellant furthermore argued that, although IPENDO contained several thousand patent and trademark matters owned by the appellant, the application in suit represents the only case where data has not been recorded in this system because of an inadvertent omission. However, this argument was already rejected by the Examining Division with reference to the case law of the boards of appeal according to which the mere allegation that the case at issue was the first instance of unintended failure does not show that a satisfactory system was in place and that thus all due care has been taken (see for example: T 223/88 of 6 July 1990, Reasons, point 5 of the Reasons; T 1764/08 of 20 December 2010, point 20 of the Reasons). The present case does not give any reason to diverge from this case law.

3.2.7 With respect to the responsibility of the appellant, the decisions which it cited do not justify any different treatment.

It is true that the circumstances underlying the case in hand were similar to those of cases J 21/92 and J 24/92 of 16 March 1995 (processed jointly), case J 5/13 of 17 January 2014 or case T 942/12 of 17 November 2015 in so far as, in all these cases, the expiry of the time limits fell within a stretch of time during which the responsibility was transferred to another person ? or at least when there was a confusion about responsibilities. Apart from that, clear differences may justify a distinct treatment.

In cases J 21/92 and J 24/92, the applicant submitted that the transfer of responsibility was made because it wanted to bundle the responsibility, which was originally scattered among a large number of law firms, by arranging for a single computer annuity bureau to take over responsibility for generating renewal reminders and paying renewal fees. In these cases the applicant further stated that the record base for the transfer was created by employees of the annuity bureau visiting the applicant and preparing a listing of the cases identified as being handled by each firm of attorneys.

This listing then was sent to the firms of attorneys originally in charge of the payment with the request that they cross-check it with its own records inform the applicant of any discrepancies (cf. J 21/92 and J 24/92 of 16 March 1995, point II of the Summary of Facts and Submissions). Thus, in cases J 21/92 and J 24/92 an independent cross-checking system was established. This system was suitable to counterbalance possible human errors and therefore in line with the case law of the boards of appeal.

In case J 5/13, with respect to the applicant, the Legal Board decided that the requirements of all due care were met because the applicant ? more specifically the responsible person within the applicant's company ? had no reason to doubt that the appellant's European representative was in possession of necessary contact details for him (cf. J 5/13 of 17 January 2014, point 3.2.2 of the Reasons). In this respect, there are no parallels with the present case.

With respect to the applicant's responsibility to observe the time limits, in case T 942/12, the appellant stated that after the applicant had changed, the new applicant had only taken over financial responsibility for renewal fee payments, not responsibility to monitor these. This statement was held to be credible as the appellant was represented by patent attorneys and could therefore expect that they would monitor time limits (cf. T 942/12 of 17 November 2015, point 3.3 of the Reasons). Once again, from this point of view, there is no parallel with the present case since the Board feels unable to conclude from the submissions on file that the appellant instructed either its European representative or its US patent attorneys to observe time limits. This applies all the more since, at the point in time when the time limit for paying the renewal fee with the additional fee expired, according to the submissions of the appellant, the responsibility for payment of annuities rested with IPENDO and thus was still the appellant's own responsibility. As a consequence, the appellant cannot validly argue that, at this particular point in time, it were relying on the responsibility of someone else.

3.3 Accordingly, it does not need to be determined whether the European representative or the US patent attorneys applied all due care required by the circumstances. It is, however, worth mentioning that, according to the appellant's latest submissions, the European representative not only informed the appellant by email dated 9 November 2012 about the possible loss of rights but subsequently also sent two reminders to his US colleagues. Hence, the fact that the appellant obviously ignored the email received from its European representative on 9 November 2012 confirms the finding of the Board that the appellant did not apply all due care. The email clearly gave notice that something had gone wrong with the application on file and should have triggered some action.

4. The Board therefore comes to the conclusion that re-establishment of rights in respect of the time limit for paying the renewal fee for the fourth year with surcharge cannot be allowed. Thus the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision J 23/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:J002314.20161215. The file wrapper can be found here. Photo "Time lapse" by Sean MacEntee obtained via Flickr under CC BY 2.0 license (no changes made).

T 1543/12 - Multiple ranges in claim, are all combinations supported?

Delta Patents Patent Law -

Many independent combinations are possible

Claim 1 in this opposition comprises a number of ranges. Individually, each of the ranges is supported by the application, but there may be combinations of the ranges that are not. Is such a claim properly supported over its entire width? The board thinks it is.  
Claim 1 in the pending requests contained a number of ranges:
1. A method for preparing a dry granulated product containing L-lysine and having the following composition:
L-lysine content in solid matter: 40 to 85% by weight equivalent ratio of anion/L-lysine 0.68 to 0.95 moisture content: 5% by weight or less (...)
Reasons for the Decision
(...)
4. Insufficiency of disclosure (Article 100(b) EPC)
4.1 The Appellant objected that the subject-matter of claim 1 could not be carried out over the whole range claimed. The claimed process is directed to the preparation of products covering the whole range of claimed lysine contents. However, it was not possible to produce lysine products having a lysine content of 85% and an equivalent ratio of more than 0.71, although an equivalent ratio of 0.68 to 0.95 was claimed.
4.2 According to Article 100(b) EPC, the European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person.
4.3 In the present case the process according to claim 1 is characterized to produce a L-lysine product. This product is inter alia characterized by a moisture content up to 5% by weight, of a L-lysine content in the final product of 40 to 85% by weight and an equivalent ratio of anion/L-lysine of 0.68 to 0.95. Therefore, any L-lysine fulfilling these three parameters is a product according to the invention. In order to be carried out over the whole range claimed, it is only necessary that each value within the claimed ranges can be achieved individually. It is, however, not a requirement of Article 83 EPC, that each and every possible combination of all individual limiting values within the claimed ranges can be achieved. The example given by the Appellant is technically impossible, since a product comprising 85% by weight of L-lysine can only comprise 15% by weight of an anion forming compound, which in the present case is hydrochloric or sulfuric acid. It follows that depending on the molecular weight of the acid used in the process the ratio of anion/L-lysine can reach only certain theoretical values within the claimed range. The skilled person knows, that both the L-lysine content in the final product and the achievable ratio of anion/L-lysine are dependent on each other and cannot vary independently over the whole range of values claimed for each of these two parameters.
4.4 Therefore, the Board concludes that the European patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person in the sense of Article 83 EPC.
(...)
This decision T 1543/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T154312.20160419. The file wrapper can be found here. Photo by Bill Ferngren (Braite), via PixaBay under a CC0  license (no changes made).

T 1750/14 - New applicant, new representative & upcoming oral proceedings

Delta Patents Patent Law -


In the examination case under appeal, the then applicant's representative requested approximately 5 weeks before the scheduled oral proceedings the postponement of the oral proceedings and the postponement of the final date for making written submissions ("final date") on the grounds that he had been informed that the present application had been transferred from the then registered applicant to another applicant, and that he did not know whether he was to remain the representative. This request was refused by the examining division as it allegedly did not constitute a serious ground within the meaning of OJ EPO 1/2009, 68, point 2.3. The applicant appeals, and argues that his right to be heard was violated and that the decision was not sufficiently substantiated.

In considering the appeal, the board considers the request for the postponement of the date of oral proceedings to be distinct from the request for the postponement of the final date, and concludes that 
the examination division failed to sufficiently substantiate in its decision why the final date could not be postponed. The applicant's main request is thus held allowable.

There are interesting deliberations in this case. Does the situation indeed qualify as a serious ground as alleged by the appellant, even though it is not explicitly mentioned in  OJ EPO 1/2009, 68, point 2.3? Did the examination division have discretionary power in the first place to postpone the final date in view of Rule 116(1) EPC stipulating that Rule 132 shall not apply? And can the date of oral proceedings indeed be postponed independently from the final date or not?
Reasons for the Decision
1. MAIN REQUEST

This procedural request is directed to setting aside the decision under appeal, to remitting the case to the examining division for further prosecution and to reimbursing the appeal fee (cf. point XIII above).

1.1 Alleged substantial procedural violation as regards refusal of the request to postpone the date for oral proceedings

1.1.1 The appellant argued that the refusal of its request for postponing the date for oral proceedings before the examining division was tainted with a violation of its right to be heard under Article 113(1) EPC, and was not sufficiently substantiated within the meaning of Rule 111(2) EPC.

1.1.2 As to the exercise of the examining division's discretion in not allowing the postponement of the date for oral proceedings before it, it is true that a change of both the applicant and the representative after having been summoned to those oral proceedings is not expressly mentioned in the list of examples of serious reasons within the meaning of the "Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO", OJ EPO 1/2009, 68, point 2.3. The board takes note of the examining division's arguments (cf. appealed decision, Reasons 1.2.3 and 1.2.4) that the new applicant could have instructed, already before the assignment regarding the transfer of the present application was signed, a patent attorney to prepare for the oral proceedings, and that the newly appointed professional representative could be expected, before taking on the mandate, to make sure that he was indeed able to prepare for such oral proceedings within a one-month period (cf. T 37/97, Reasons 2.2; J 4/03, Reasons 5). The examining division also took into account, inter alia, the complexity of the case.

1.1.3 In that regard, the board considers that, under the hypothetical assumption that there had been no request for postponement of the final date for making submissions in preparation for the oral proceedings (henceforth "final date") or that such request had no relation whatsoever to the request for postponement of the date for oral proceedings, it would appear that all the arguments presented by the then applicant as regards the postponement of the date for oral proceedings were properly addressed and treated in the appealed decision (see point 10 of the Summary of Facts and Submission and point 1 of the Reasons).

1.1.4 However, the appellant repeatedly requested that the final date of 6 January 2014 be postponed, arguing that the new applicant, represented by the newly appointed representative, could not reasonably be expected to file amendments less than one week after the change of applicant and representative. These arguments were not addressed in the entire decision under appeal (see point 1.2.5 below). It is not clear whether the examining division in fact saw any relationship between the request for postponement of the final date and the request for postponement of the date for oral proceedings. If the examining division did see any such relationship (such as a strict link between the two dates), the request for postponement of the final date and the supporting arguments should have been addressed, at least, in the context of the refused request for postponement of the date for oral proceedings (see point 1.2.6 below).

1.2 Alleged substantial procedural violation as regards refusal of the request to postpone the final date

1.2.1 The appellant submitted that the time available between the conclusion of the application-transfer agreement and the final date set by the examining division was too short for studying the case and for preparing reasoned written submissions (cf. points III and V above).

1.2.2 The final date for making written submissions in preparation for the oral proceedings is codified in Rule 116 EPC as follows (emphasis added by the board):

"(1) When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.

(2) If the applicant ... has been notified of the grounds prejudicing the grant ..., he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis."

Rule 116(1) EPC hence stipulates that Rule 132 EPC shall not apply. In particular, Rule 132(2) EPC reads as follows:

"Unless otherwise provided, a period specified by the European Patent Office shall be neither less than two months nor more than four months; in certain circumstances it may be up to six months. In special cases, the period may be extended upon request, presented before the expiry of such period."

Thus, Rule 132(2) EPC, on the one hand, establishes that, in the absence of specific provisions, periods specified by the EPO normally shall be between two and four months (first sentence). On the other hand, it stipulates that, in special cases, such periods may be extended upon request (second sentence). From that wording alone it is not clear to the board whether the non-applicability of Rule 132(2) EPC to Rule 116(1) EPC relates only to the above limitations for periods specified by the EPO (allowing e.g. that a final date less than two months ahead of the date for oral proceedings be set) or whether it should also preclude the possibility of extending specified periods implying that the final date set under Rule 116(1) EPC could not be changed. In fact, according to a literal reading of the provisions of Rule 116(1) EPC in conjunction with Rule 132(2) EPC as done in the Guidelines for Examination in the EPO (see D-VI, 3.2, last sentence e.g. in the applicable version of September 2013), said final date may not be extended.

1.2.3 However, the admissibility of claim amendments filed after the final date specified in Rule 116(1) EPC is subject to the examining division's discretion. The examining division may not refuse to consider new claims on the sole ground that they had not been filed prior to the final date stated in a summons to oral proceedings (see e.g. T 755/96, OJ EPO 2000, 174, Reasons 4.1; T 798/05, Reasons 7, last two paragraphs). When Rule 71a(1) EPC 1973, the predecessor of Rule 116(1) EPC, was introduced, that rule was not intended to restrict the discretion conferred on EPO departments under Article 114(2) EPC (see Explanatory Memorandum CA/12/94 rev. 1, point 7.4, as quoted in T 755/96, Reasons 2.2). In this context, it may at least be questioned whether the non-applicability of Rule 132(2) EPC in Rule 116(1) EPC has necessarily to be understood as an exclusion of any discretionary power exercised by the examining division to postpone the final date.

1.2.4 Should the postponement of the final date under Rule 116(1) EPC indeed be excluded by the negative reference to Rule 132(2) EPC, the question arises whether the final date may be changed if the scheduled oral proceedings are cancelled and a new date for them is set by the first-instance department. While there may be situations where it is appropriate to change the date for oral proceedings while maintaining the final date, the board considers that a change of the final date should normally be allowable when the date for oral proceedings is postponed. At least in cases where a final date is specified relative to the date for oral proceedings (usually one month before the scheduled oral proceedings), it could even be argued that the final date is postponed automatically when the oral proceedings are postponed.

1.2.5 In the present case, the final date had been set to 6 January 2014. The appellant's representatives requested a postponement of this date repeatedly and separately from their request to postpone the date for oral proceedings (cf. points III and VIII above). It is apparent to the board that the statements made by the first examiner of the examining division (cf. points IV and VII above) seem to imply that the examining division in fact took a final and binding decision within the meaning of J 8/81 (OJ EPO 1982, 10, Headnote I) on the request for postponement of the final date, on which the then applicant apparently had no opportunity to comment, rather than having merely expressed its preliminary opinion thereon. It is also evident that the specific reasons for not allowing any postponement of the final date - regardless of the refusal of the request for postponement of the date for oral proceedings - are not addressed in the decision under appeal. It is only mentioned that the question of filing amendments of the application after expiry of the final date did not arise (cf. point IX above). This remark cannot, however, be considered to be a reasoning for the refusal of the request for postponement of that final date. The fact that no submissions other than procedural requests were filed after the final date does not mean that the request for postponement of the final date has become pointless. The request for postponement of the final date was never withdrawn and the appellant's desire to file amended claims was made clear even during oral proceedings before the examining division when it requested that the examination proceedings be continued in writing.

Hence, the examining division's decision to refuse the appellant's request for postponement of the final date lacks a reasoning required under Rule 111(2) EPC.

1.2.6 The board can only surmise that the examining division may have assumed that the final date is only to be postponed together with the date for the oral proceedings and that, as a consequence, the request for postponement of the final date and the request for postponement of the date for oral proceedings could not be separated from each other and could only be decided together. However, in this case or if the examining division indeed considered those two requests to be linked in any other way, the appellant's arguments presented concerning the request for postponement of the final date should have been considered at least in the context of the request for postponement of the date for oral proceedings (see point 1.1.4 above).

1.3 In view of the above, the board concludes that, due to a lack of substantiation within the meaning of Rule 111(2) EPC with regard to the request concerning the final date and/or to the request concerning the date for oral proceedings, the examining division indeed committed a substantial procedural violation which justifies the impugned decision being overturned.

At the same time, this amounts to a fundamental deficiency apparent in the first-instance proceedings within the meaning of Article 11 RPBA (see e.g. T 309/09, Reasons 8). It is also worth noting that the board does not take any position as to whether the right to be heard under Article 113(1) EPC was violated in any other way than by lack of substantiation in the decision under appeal. However, such a lack of substantiation under Rule 111(2) EPC is in itself sufficient reason to set aside the decision under appeal. Moreover, said lack of substantiation, in particular with respect to the request for postponement of the final date, prevents the board from a comprehensive assessment of the examination proceedings in view of Article 113(1) EPC.

1.4 Remittal for further prosecution (Article 11 RPBA)

1.4.1 Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, "unless special reasons present themselves for doing otherwise". In this regard, it has to be established in the present case whether special reasons are discernible against such remittal.

1.4.2 Despite the fact that the filing date accorded to the present application is 31 March 1999 (i.e. eighteen years ago) and that substantive issues of the case have already been touched upon in these appeal proceedings (cf. board's communication under Article 15(1) RPBA, points 3.1 to 3.3), the board does not see any "special reason" justifying a deviation from the general rule prescribed by Article 11 RPBA. In fact, the appellant was only partially responsible for the delays in the first-instance proceedings. The present application was actually filed in April 2003 as a divisional application. After issuance of a first communication in July 2004 there was no office action until the appellant had a telephone conversation with the first examiner in September 2011. The appellant requested remittal of the case for further prosecution, and filed amended sets of claims in the appeal proceedings. Under these circumstances, the appellant's interest in having the case examined in two instances prevails over the general interest of bringing proceedings to a close within an appropriate period of time.

1.4.3 In conclusion, the present case is to be remitted to the examining division for further prosecution under Article 111(1) EPC in conjunction with Article 11 RPBA.

1.5 Request for reimbursement of appeal fee

1.5.1 At the oral proceedings before the board, the appellant maintained its request for reimbursement of the appeal fee on the grounds that a substantial procedural violation had occurred in the examination proceedings, without providing further comments supporting this request. Given that the impugned decision is to be set aside and that the appeal is therefore allowable, the board has next to establish whether such reimbursement appears to be equitable under Rule 103(1)(a) EPC.

1.5.2 The board holds that the applicant - and in particular its professional representative - must or should have known, in view of Rule 116(1), last sentence, EPC that it is generally not guaranteed that any written submission is automatically admitted into the proceedings before the EPO for the sole reason that it is filed prior to the final date, nor is it entirely unlikely that a submission may be admitted under the department's discretion when filed after that date. Rather, the then applicant could have followed the invitation from the examining division (cf. point II above) and attempted to file, for example, amended sets of claims with the aim of overcoming the objections raised in the summons to the first-instance oral proceedings after 6 January 2014, the final date set in the summons.

This was, however, not done by the applicant of its own volition. In the board's view, such procedural behaviour speaks against regarding the reimbursement of the appeal fee as equitable within the meaning of Rule 103(1)(a) EPC. A party cannot gain a procedural advantage from an omission of its own, pursuant to the legal principle "nemo auditur propriam turpitudinem allegans" (cf. T 1705/07, Reasons 8.7). The appellant should have known - in view of the rather negative opinion of the examining division set out in its communication accompanying the summons - that filing no amended claims would in all likelihood lead to a refusal of the application based on its merits, and that amendments filed at any time before oral proceedings were not a priori inadmissible. In other words, the substantial procedural violation alone was not causal for the need to lodge an appeal against the eventual refusal of the application. Reimbursement of the appeal fee is therefore refused.

2. FIRST AND SECOND AUXILIARY REQUESTS

Since the appellant's main request is found to be allowable, it is not necessary to consider its first and second auxiliary requests any further.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The request for reimbursement of the appeal fee is refused.

This decision T 1750/14 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T175014.20170131. The file wrapper can be found here. Photo "Improved LEGO Calendar Front" by Bill Ward obtained via Flickr under CC BY 2.0 license (no changes made).

T 579/16 - Double identity

Delta Patents Patent Law -


This appeal is against a decision of the opposition division by which an opposition was deemed non-admissible. In the present case case, the form 2300 indicated "BYK-Chemie GmbH" as opponent, whereas the attached document containing the grounds of appeal mentioned "Einsprechende: BASF Coatings GmbH" just before the heading "EINSPRUCHSBEGRÜNDUNG".

Due to this seemingly contradictory information, the opposition division held the identity of the opponent not to be sufficiently established before expiry of the opposition period, and as a consequence the opposition inadmissible.

In the appeal, the opponent now as appellant essentially argues that since the tick box for 'Multiple opponents' in form 2300 was not checked and the address specified in form 2300 corresponds to that of BYK-Chemie, it was clear that BYK-Chemie was intended to be the opponent and that the mentioning of BASF in the grounds of appeal was essentially an clerical error.

However, the board of appeal concurs with the opposition division with respect to the lack of clear identification of the opponent, but does hold the mentioning of BASF to be correctable under Rule 139 EPC first sentence, as requested by the appellant/opponent in both proceedings but for the first time requested after the expiry of the opposition period.

Of interest here is how the board deals with the application of the criteria summarized by G 1/12 whether such a request is allowable, and in particular, whether the request for correction in this particular case was filed "without delay".

Reasons for the Decision
1. Die Beschwerde ist zulässig. Einwände gegen die Zulässigkeit der im Namen der BYK-Chemie GmbH eingelegten Beschwerde wurden nicht erhoben.

Feststellung der Identität des Einsprechenden nach Artikel 99(1) in Verbindung mit Regel 76(2)(a) EPÜ

2. Die Einspruchsabteilung hat in der angefochtenen Entscheidung den Einspruch nach Artikel 99(1), Regel 77(1) EPÜ verworfen, weil die Identität der Einsprechenden aus den bis zum Ablauf der Einspruchsfrist vorgelegten Dokumenten nicht eindeutig feststellbar sei. Die Beschwerdeführerin hat in ihrer Beschwerdebegründung ihre zu dem hier relevanten Punkt bereits im Verfahren vor der Einspruchsabteilung angeführten Argumente lediglich wiederholt, jedoch insoweit keine neuen Gründe für die Zulässigkeit des Einspruchs vorgebracht.

3. In dem Zusatz zur Ladung zur mündlichen Verhandlung vom 3. November 2016 hat die Kammer in einer vorläufigen Stellungnahme u.a. mitgeteilt, dass die Begründung der Einspruchsabteilung, dass die Identität der Einsprechenden innerhalb der Einspruchsfrist nicht hinreichend sicher feststellbar ist, aus rechtlicher Sicht nicht zu beanstanden sei und die insoweit von der Beschwerdeführerin vorgebrachten Argumente keinen Bestand haben könnten. Sie hat hierzu folgendes ausgeführt:

"Die Einspruchsabteilung hat ausgeführt, dass die Identität der Einsprechenden aus den bis zum Ablauf der Einspruchsfrist vorgelegten Dokumenten nicht eindeutig feststellbar sei. Entgegen der Ansicht der Einsprechenden hätten die Angaben im Formular 2300 keinen Vorrang vor den Angaben in den übrigen Bestandteilen des Einspruchs, insbesondere in dem Anhang "EINSPRUCHSBEGRÜNDUNG" zum Formular 2300. Insoweit treffe es nicht zu, dass - wie die Beschwerdeführerin meint - die auf Seite 1 der Anlage zum Formular 2300 oberhalb der Überschrift "Einspruchsbegründung" enthaltenen Angaben, einschließlich der irrtümlich als Einsprechende bezeichneten "BASF Coatings GmbH" (nachfolgend "BASF"), nicht Teil der Einspruchsbegründung und damit nicht Teil des Tatsachenvorbringens seien. Dass die "BASF" keinen Sitz an der im Formular 2300 angegebenen Adresse in Wesel habe, sage objektiv nichts darüber aus, dass der Einspruch im Namen der "BYK-Chemie GmbH" (nachfolgend "BYK") eingelegt werden sollte. Die Angabe einer Adresse oder deren Fehlen sei kein ausreichendes Kriterium, das bei widersprüchlichen Angaben auf die Identität der Einsprechenden schließen lasse. Entgegen der Ansicht der Einsprechenden habe das EPA auch weder mit der Empfangsbescheinigung vom 29. März 2012 noch mit der Aufforderung an die Patentinhaberin vom 7. Mai 2012, sich zum Einspruch der "BYK" zu äußern, rechtsverbindlich signalisiert, dass die Einsprechende damit eindeutig bezeichnet wäre. Diese Begründung der Einspruchsabteilung ist aus rechtlicher Sicht nicht zu beanstanden und trägt im wesentlichen die Entscheidung, dass die Identität der Einsprechenden innerhalb der Einspruchsfrist nicht hinreichend sicher feststellbar ist."

4. Der Schriftsatz der Beschwerdeführerin vom 12. Dezember 2016 als Erwiderung auf den Ladungszusatz der Kammer und auf die Stellungnahme hierzu seitens der Beschwerdegegnerin vom 30. November 2016 enthält zur Frage der Feststellung der Identität der Einsprechenden aus den bis zum Ablauf der Einspruchsfrist vorgelegten Dokumenten keinen Vortrag. In der mündlichen Verhandlung vor der Kammer hat die Beschwerdeführerin hierzu grundsätzlich auf ihren schriftlichen Vortrag in der Beschwerdebegründung verwiesen und zwei ihrer dort genannten Argumente nochmals erwähnt. Es handelt sich hierbei um das Vorbringen, dass die "BASF Coatings GmbH" in der Anlage zum Formular 2300 oberhalb der Überschrift "Einspruchsbegründung" genannt, und somit weder Teil der Einspruchsbegründung noch des Tatsachenvorbringens sei sowie um den Umstand, dass die "BASF Coatings GmbH" keine Niederlassung an der in dem Formular 2300 genannten Adresse der "BYK" habe. Da jedoch auch diese Argumente - wie ausgeführt - Gegenstand der angefochtenen Entscheidung, der schriftlichen Beschwerdebegründung und der vorläufigen Stellungnahme der Kammer in ihrem Ladungsbescheid waren, sieht die Kammer auch nach nochmaliger Prüfung keinen Anlass, von ihrer in dem Ladungsbescheid geäußerten Auffassung abzuweichen.

5. Die Beschwerde der Einsprechenden hat daher, soweit sie sich gegen die Entscheidung der Einspruchsabteilung richtet, dass die Identität des Einsprechenden nach Artikel 99(1) in Verbindung mit Regel 76(2)(a) EPÜ aufgrund der innerhalb der Einspruchsfrist vorgelegten Dokumente nicht festgestellt werden kann, keinen Erfolg.

Antrag auf Berichtigung der Bezeichnung "BASF Coatings GmbH" nach Regel 139 Satz 1 EPÜ

6. Die Beschwerdeführerin hat im erstinstanzlichen Verfahren erstmals mit Schreiben vom 11. September 2014 und nochmals hilfsweise in ihrer schriftlichen Beschwerdebegründung beantragt, die Bezeichnung "BASF Coatings GmbH" auf der Seite 1 der Anlage zum Formular 2300 in "BYK-Chemie GmbH" nach Regel 139 Satz 1 EPÜ zu berichtigen.

7. Die Grosse Beschwerdekammer (GBK) hat in der Entscheidung G 1/12 (ABl. EPA 2014, A114, Frage 3, Nr. 32 bis 36 und Nr. 39 der Gründe) entschieden, dass Regel 139 Satz 1 EPÜ Anwendung finden kann, wenn der Name des Beschwerdeführers falsch angegeben war und die beantragte Berichtigung den "Wechsel" des Beschwerdeführers umfasst (GBK, a.a.O., Nr. 32 der Gründe). In der Entscheidung T 615/14 vom 27. Oktober 2015 hat die dortige Beschwerdekammer ausgeführt, dass die in der Entscheidung G 1/12 gegebene Begründung für die Anwendbarkeit der Regel 139 Satz 1 EPÜ für die Berichtigung der Bezeichnung der Einsprechenden in entsprechender Weise gilt. Danach findet Regel 139 Satz 1 EPÜ allgemein auf alle beim Europäischen Patentamt eingereichten Unterlagen, einschließlich des Einspruchs, Anwendung (T 615/14, Nr. 1.4 der Gründe).

8. Die Kammer hält die in der Entscheidung T 615/14 für die Übertragbarkeit der in der Entscheidung G 1/12 für die Anwendbarkeit der Regel 139 Satz 1 EPÜ hinsichtlich der Berichtigung des Beschwerdeführers genannten Begründung auf die Frage der Berichtigung der Bezeichnung der Einsprechenden für richtig und schließt sich dieser Begründung auch für das vorliegende Beschwerdeverfahren an. Dies gilt auch für die - zu verneinende - Frage, ob Regel 139 Satz 1 EPÜ als "lex generalis" hinter die speziellen Regeln für das Beschwerde- bzw. Einspruchsverfahren zurücktritt (vgl. G 1/12, Nr. 39 der Gründe, T 615/14, Nr. 1.7.1 der Gründe).

9. Die somit für die hilfsweise beantragte Berichtigung der Bezeichnung "BASF Coatings GbmH" in "BYK-Chemie GmbH" anwendbare Regel 139 Satz 1 EPÜ lautet:

"Sprachliche Fehler, Schreibfehler und Unrichtigkeiten in den beim Europäischen Patentamt eingereichten Unterlagen können auf Antrag berichtigt werden." (Hervorhebung durch die Kammer)

10. In der Entscheidung G 1/12 (Nr. 37 der Gründe) hat die GBK die von der Rechtsprechung der Beschwerdekammern entwickelten Grundsätze wie folgt zusammengefasst:

a) Die Berichtigung muss der ursprünglichen Absicht entsprechen. Beispielsweise kann sich ein Anmelder, der eine bei der ursprünglichen Anmeldung nicht beabsichtigte Benennung hinzufügen möchte, nicht auf Regel 88 Satz 1 EPÜ 1973 berufen (J 8/80, ABl. EPA 1980, 293, insbesondere Nr. 7 der Entscheidungsgründe). Die Möglichkeit der Berichtigung darf nicht dazu benutzt werden, einem Beteiligten, der seine Meinung geändert oder seine Pläne weiter ausgestaltet hat, die Durchsetzung seiner neuen Vorstellungen zu ermöglichen (J 8/80, a. a. O., Nr. 6 der Entscheidungsgründe; J 6/91, ABl. EPA 1994, 349). Zu berücksichtigen ist die wirkliche und nicht die mutmaßliche Absicht des Beteiligten.

b) Ist die ursprüngliche Absicht nicht sofort erkennbar, so trägt der Antragsteller die Beweislast, an die hohe Anforderungen gestellt werden müssen (J 8/80, a. a. O., Nr. 6 der Entscheidungsgründe).

c) Der zu berichtigende Fehler kann eine unrichtige Angabe sein oder sich aus einer Auslassung ergeben.

d) Der Berichtigungsantrag muss unverzüglich gestellt werden.

zu a) und b):

11. Die ursprüngliche Absicht der Beschwerdeführerin, den Einspruch im Namen der "BYK" einzulegen, war aufgrund der widersprüchlichen Angaben im Formblatt 2300 ("BYK")einerseits und in der Anlage "Einspruchsbegründung" ("BASF") andererseits nicht sofort, jedenfalls nicht innerhalb der Einspruchsfrist, erkennbar.

Dabei kann bereits unmittelbar aus der Entscheidung G 1/12 abgeleitet werden, dass Beweismittel zum Nachweis der ursprünglichen Absicht bei Einreichung des Einspruchs auch später im Verfahren nachgereicht werden können. In G 1/12 (Nr. 37(b) der Gründe) wird klargestellt, dass der Antragsteller die Beweislast trägt und sodann auf J 8/80 verwiesen, wonach die Berichtigung einer Bestimmung eines Vertragsstaates auf der Grundlage später eingereichter Beweise betreffend die ursprüngliche Absicht des Vertreters zulässig ist. Diese Rechtsprechung wurde in der Entscheidung T 445/08 vom 26. März 2015 (aus diesem Verfahren resultiert die Vorlage zu G 1/12) bestätigt (siehe T 615/14, Nr. 1.7.3 der Gründe). Die Aussage in T 615/14 (Nr. 1.7.5 der Gründe), dass die ursprüngliche Absicht bei Einreichung des Einspruchs auch aufgrund von nach Ablauf der Einspruchsfrist eingereichter Beweise bei der Prüfung nach Regel 139 Satz 1 EPÜ festgestellt werden kann, hält die vorliegende Kammer für überzeugend und schließt sich dieser Auffassung für das vorliegende Beschwerdeverfahren an.

12. Die Beschwerdeführerin hat zunächst während der mündlichen Verhandlung vor der Einspruchsabteilung und dann - was die Kammer für die hier zu treffende Entscheidung für wesentlich hält (siehe unten Punkt 13.) - nochmals mit der Beschwerdebegründung die Anlagen A1 bis A4 eingereicht. Diese aus e-mails (A1 bis A3) und einem Schreiben (A4) bestehenden Unterlagen belegen den Auftrag der "BYK" an die anwaltlichen Vertreter der Einsprechenden, Einspruch gegen das Streitpatent einzulegen (A1), die Annahme des Auftrags durch die anwaltlichen Vertreter (A2), Vereinbarungen zur Durchführung einer Recherche nach Einspruchsmaterial (A3) und die Übersendung der Einspruchsschrift an die "BYK" (A4). Nach Auffassung der Kammer bestehen allein aufgrund dieser Unterlagen keine begründeten Zweifel daran, dass es von Anfang an dem wirklichen Willen der anwaltlichen Vertreter entsprach, den Einspruch im Namen der "BYK" einzulegen. Durch den eindeutigen und unmissverständlichen Aussagegehalt dieser Unterlagen sind auch die insoweit geforderten hohen Anforderungen an die Beweislast erfüllt.

13. Die Anlagen 1 bis 4 sind mit der Beschwerdebegründung (erneut) gemäß Artikel 12(1)a) der Verfahrensordnung der Beschwerdekammern (VOBK) eingereicht worden und erfüllen die Voraussetzungen nach Absatz 2 dieser Vorschrift, wonach die Beweismittel anzuführen und nach Absatz 2a) beizufügen sind, auf die Bezug genommen wird. Da die Anlagen somit zum frühest möglichen Zeitpunkt im Beschwerdeverfahren eingereicht und - wie ausgeführt - nach Auffassung der Kammer auch "prima facie" hoch relevant für die Beurteilung der tatsächlichen ursprünglichen Absicht der Vertreter der Einsprechenden bei Einreichung des vorliegenden Einspruchs und somit für dessen Zulässigkeit sind, sind insoweit Gründe, die Anlagen nicht in das Verfahren zuzulassen und zu berücksichtigen, nicht erkennbar. Die Kammer beabsichtigt daher nicht, von dem ihr nach Artikel 12(4) VOBK eingeräumten Ermessen, die Anlagen als Beweismittel nicht zuzulassen, wenn diese, was hier der Fall ist, z. B. im erstinstanzlichen Verfahren nicht zugelassen worden sind, Gebrauch zu machen. Die Kammer hält diese Ermessensentscheidung um so mehr für geboten, da die Entscheidung der Einspruchsabteilung, die Anlagen A1 bis A4 nicht in das Verfahren zuzulassen, auf einer nicht rechtsfehlerfreien Ausübung des Ermessens beruht, wie die Kammer in ihrem Ladungszusatz vom 3. November 2016 festgestellt hat.

14. Da die Kammer die Anlagen A1 bis A4 aufgrund deren Einreichung mit der Beschwerdebegründung nach Artikel 12(1)a),(2) und (4) VOBK in das Verfahren zulässt, kommt es für die hier zu treffende Entscheidung auf die zwischen den Beteiligten streitigen Fragen, ob die Einreichung der Anlagen A1 bis A4 erst während der mündlichen Verhandlung vor der Einspruchsabteilung verspätet war und ob die Nichtzulassung der Anlagen durch die Einspruchsabteilung auf einer ermessensfehlerhaften Entscheidung beruhte, nicht an.

zu c):

15. Der zu berichtigende Fehler besteht hier in der unrichtigen Angabe der "BASF Coatings GmbH" in der die "Einspruchsbegründung" enthaltenden Anlage zum Formblatt 2300 statt der beabsichtigten, und somit mit der Angabe in diesem Formblatt übereinstimmenden Bezeichnung "BYK-Chemie GmbH" als Einsprechende.

zu d):

16. Schließlich ist erforderlich, dass der Berichtigungsantrag nach Regel 139 Satz 1 EPÜ "unverzüglich" gestellt worden ist. Soweit ersichtlich, enthalten weder das Europäische Patentübereinkommen noch nachgeordnete Verwaltungsvorschriften, wie insbesondere die Richtlinien für die Prüfung im Europäischen Patentamt, Hinweise, wie dieser Rechtsbegriff auszulegen ist. Soweit in der Rechtsprechung der Beschwerdekammern diese Voraussetzung für einen Antrag nach Regel 139 Satz 1 EPÜ erörtert wird, wird lediglich der Begriff "unverzüglich" (vgl. J 10/87, ABl. EPA 1989, 323, Nr. 13. (iii) und Nr. 14 (iii) der Gründe) bzw. "without undue delay" (J 16/08 vom 31. August 2009, Nr. 13 der Gründe) genannt, ohne diesen Rechtsbegriff zu definieren. Auch die in dem vorliegenden Beschwerdeverfahren zitierte Entscheidung T 603/15 vom 25. Mai 2016 (Nr. 3.3.2 bis 3.4 der Gründe) benennt den dort maßgeblichen Zeitraum von vier Jahren für nicht mehr "unverzüglich", jedoch auch ohne diesen Begriff näher zu definieren. Die Entscheidung J 16/08 (a.a.O.) enthält jedoch den Hinweis, dass für die Beurteilung der "Unverzüglichkeit" die Umstände des Einzelfalls zu berücksichtigen sind (Nr. 13 der Gründe).

17. Allerdings definiert das deutsche Bürgerliche Gesetzbuch in § 121(1) betreffend die Anfechtung von Willenserklärungen und somit in einer einem Berichtigungsantrag nach Regel 139 Satz 1 EPÜ nicht wesensfremden Vorschrift, den Begriff "unverzüglich" als "ohne schuldhaftes Zögern". Entscheidend für die Unverzüglichkeit ist danach nicht die objektive, sondern die subjektive Zumutbarkeit des alsbaldigen Handelns. Es kommt also neben den nach der Entscheidung J 16/08 zu berücksichtigenden Einzelfallumständen auf die Kenntnisse und persönliche Sichtweise des zum Handeln Verpflichteten an. Auch wenn eine unmittelbare Anwendung des Artikels 125 EPÜ hier nicht gerechtfertigt erscheint, da schon zweifelhaft ist, ob es sich bei der Definition des Begriffs "unverzüglich" als "ohne schuldhaftes Zögern" um einen in den Vertragsstaaten anerkannten allgemeinen Verfahrensgrundsatz handelt, ist die Kammer jedoch auch nicht gehindert, diese Bedeutung in dem vorliegenden Verfahren zugrunde zu legen (vgl. hierzu J 2/08 vom 27. Mai 2009, Nr. 48 der Gründe).

18. Bei Zugrundelegung dieser Maßstäbe kommt die Kammer zu der Schlussfolgerung, dass der mit Schriftsatz der Einsprechenden vom 11. September 2014 gestellte Berichtigungsantrag nicht als nicht "unverzüglich" anzusehen ist.

19. Bei den hier vorliegenden widersprüchlichen Angaben zur Person der Einsprechenden bei Einreichung des Einspruchs und bis zum Ablauf der Einspruchsfrist (Regel 76(2)a) EPÜ) hätte erwartet können, dass die Einspruchsabteilung gemäß Regel 77(2) EPÜ eine Mitteilung erlässt mit der Aufforderung, diesen Mangel innerhalb einer zu bestimmenden Frist zu beseitigen. Eine solche Mitteilung ist, wie die Einsprechende in ihrem Schreiben vom 10. September 2012 ausführt, aus ihrer Sicht, wonach kein Zweifel an der Identität der Einsprechenden bestand, "zu Recht" nicht ergangen. Die Einsprechende hat in der mündlichen Verhandlung vor der Beschwerdekammer bestätigt, eine Mitteilung nach Regel 77(2) EPÜ auch nach dem Schreiben vom 10. September 2012 nicht erhalten zu haben. Eine erste Äußerung seitens der Einspruchsabteilung zur Frage der Identität der Einsprechenden und Zulässigkeit des Einspruchs erfolgte erst mit der Mitteilung vom 4. Juli 2014, die auch einen Hinweis auf die Möglichkeit, einen Berichtigungsantrag nach Regel 139 Satz 1 EPÜ zu stellen, enthielt.

20. In Erwiderung auf diese Mitteilung stellte die Beschwerdeführerin mit Schreiben vom 11. September 2014 einen Antrag auf Berichtigung der Angabe "BASF Coatings GmbH" in "BYK-Chemie GmbH" nach Regel 139 EPÜ. Der Antrag wurde danach noch vor Ablauf von zwei Monaten nach dem Hinweis der Einspruchsabteilung und somit sogar noch innerhalb der von der Einspruchsabteilung in ihrer Mitteilung gewährten Frist zur Stellungnahme gestellt. Nach Auffassung der Kammer ist dadurch die Voraussetzung der "Unverzüglichkeit" der Antragstellung im Hinblick auf die Mitteilung der Einspruchsabteilung erfüllt, was auch von der Beschwerdegegnerin nicht bestritten wird.

21. Die Beschwerdegegnerin bestreitet jedoch, dass für die "Unverzüglichkeit" auf den Hinweis der Einspruchsabteilung auf Regel 139 Satz 1 EPÜ in der Mitteilung vom 4. Juli 2014 abzustellen sei und meint, ein Anlass für die Stellung des Berichtigungsantrags hätte bereits zu einem wesentlich früheren Verfahrensstadium bestanden, nämlich als Reaktion auf die in der Einspruchserwiderung aufgrund der abweichenden Bezeichnungen geäußerten Zweifel an der Identität der Einsprechenden. Danach wäre der mit Schreiben vom 11. September 2014, also ca. zwei Jahre später gestellte Antrag nach Regel 139 EPÜ nicht mehr als "unverzüglich" anzusehen.

22. Die Kammer vermag sich dieser Ansicht der Beschwerdegegnerin unter Berücksichtigung der Umstände des vorliegenden Einzelfalls nicht anzuschließen. Die Einsprechende durfte aus subjektiver Sicht, nachdem sie selbst in ihrem Schreiben vom 10. September 2012 ausgeführt hatte, eine Mitteilung nach Regel 77(2) EPÜ sei - aus ihrer Sicht - zu Recht nicht ergangen und dieses Vorbringen bis zur Mitteilung der Einspruchsabteilung vom 4. Juli 2014 unbeantwortet blieb, davon ausgehen, dass vorerst kein Anlass für weitere Anträge, insbesondere eines Antrags nach Regel 139 Satz 1 EPÜ bestand. Zu dieser Sichtweise mag auch beigetragen haben, dass die "BYK" als Einsprechende in der Empfangsbescheinigung vom 29. März 2012 und in der Aufforderung an die Patentinhaberin vom 7. Mai 2012, sich zum Einspruch der "BYK" zu äußern, angegeben wurde, wobei diesen Mitteilungen ohne Zweifel keine rechtlich verbindliche Bedeutung zukommt, was die Einspruchsabteilung zutreffend festgestellt und auch die Beschwerdeführerin selbst eingeräumt hat. Nach Auffassung der Kammer kann unter Berücksichtigung der genannten Umstände der Einsprechenden kein aus subjektiver Sicht schuldhaftes Zögern bei der Stellung des Antrags nach Regel 139 Satz 1 EPÜ mit Schreiben vom 11. September 2014 vorgeworfen werden.

23. In diesen dargelegten Umständen des vorliegenden Falles sieht die Kammer auch einen entscheidenden Unterschied zu dem der Entscheidung T 603/15 vom 25. Mai 2016 zugrundeliegenden Sachverhalt. Anders als im vorliegenden Fall hat dort nicht nur die Patentinhaberin in der Beschwerdeerwiderung (entspricht vorliegend der Einspruchserwiderung vom 14. August 2012), sondern nur einen Tag später auch die Beschwerdekammer auf den Mangel der Identität der Beschwerdeführerin hingewiesen. Wie dargelegt, fehlt es hier jedoch an einer solchen, der genannten Mitteilung der Beschwerdekammer in dem zitierten Verfahren entsprechenden Mitteilung der Einspruchsabteilung in einem vergleichbar frühen Verfahrensstadium (vgl. T 603/15, Nr. 3.3.2. der Gründe). Der in dem Verfahren T 603/15 erst ca. vier Jahre später gestellte Antrag auf Berichtigung der irrtümlichen Angabe im Formblatt 2300 nach Regel 139 Satz 1 EPÜ wurde von der dortigen Kammer daher völlig zu Recht als nicht "unverzüglich" angesehen. In Anbetracht dieser für die hier zu beantwortende Frage der Unverzüglichkeit des Antrags nach Regel 139 Satz 1 EPÜ nicht unwesentlichen Unterschiede zwischen dem der Entscheidung T 603/15 und dem vorliegenden Verfahren zugrundeliegenden Sachverhalt steht die hier getroffene Entscheidung nicht im Widerspruch zu den im Verfahren T 603/15 getroffenen Feststellungen.

24. Auch unter Berücksichtigung des von der Rechtsprechung entwickelten Kriteriums der Rechtssicherheit kann die Kammer nicht zu dem Schluss kommen, dass der Berichtigungsantrag aufgrund der Tatsache, dass er nicht rechtzeitig gestellt wurde, zurückzuweisen wäre. Bei der Frage, ob ein Berichtigungsantrag rechtzeitig gestellt wurde, meint die Kammer, dass einerseits der Schutz von Anmeldern, die echte Fehler beheben wollen, und andererseits die Interessen Dritter, die sich auf veröffentlichte Informationen verlassen, berücksichtigt werden müssen. Die Kammer kommt zu dem Schluss, dass im vorliegenden Fall keine Irreführung der Öffentlichkeit stattgefunden hatte, und daher Dritte durch die Stattgabe des Berichtigungsantrags nicht benachteiligt wurden. Spätestens ab Kenntnisnahme des Schreibens der Einsprechenden vom 10. September 2012 war für die Patentinhaberin und die Öffentlichkeit klar, wer Einsprechende sein sollte. Eine Benachteiligung dadurch, dass der Antrag erst im September 2014 gestellt wurde, ist daher nicht erkennbar. Auch in dieser Hinsicht besteht ein Unterschied zu dem der Entscheidung T 603/15 zugrundeliegenden Sachverhalt, wo über mehrere Jahre nicht überzeugend dargelegt wurde, was die wahre Absicht bei der Einreichung des Einspruchs gewesen war.

25. Eine zulässige Berichtigung nach Regel 139 Satz 1 EPÜ ist rückwirkend (G 1/12, a.a.O., Nr. 37, letzter Satz der Gründe), so dass der Einspruch bei Vorliegen der übrigen Zulässigkeitsvoraussetzungen als zulässig erachtet wird (vgl G 1/12, a.a.O., Nr. 38 der Gründe).

26. Da somit der Antrag nach Regel 139 Satz 1 EPÜ in dem vorliegenden Verfahren nicht nur als grundsätzlich zulässig, sondern auch tatsächlich für begründet erachtet wird, ist der Antrag der Beschwerdeführerin auf Vorlage der Frage an die Grosse Beschwerdekammer gegenstandslos.

27. Nachdem dem Antrag auf Berichtigung nach Regel 139 Satz 1 EPÜ stattgegeben wird und der Einspruch insoweit rückwirkend als zulässig anzusehen ist (s.o. Nr. 24), wird die Angelegenheit an die erste Instanz zur weiteren Entscheidung über den Einspruch zurückverwiesen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angegriffene Entscheidung wird aufgehoben.

2. Dem Antrag auf Berichtigung der Bezeichnung "BASF Coatings GmbH" auf der Seite 1 der Anlage zum Formular 2300 in "BYK-Chemie GmbH" wird stattgegeben.

3. Die Angelegenheit wird an die erste Instanz zur weiteren Entscheidung zurückverwiesen.

This decision T 579/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T057916.20170118. The file wrapper can be found here. Photo by geralt obtained via Pixabay (no changes made).

T 545/08: a lecture: internet disclosures and balance of probabilties

Delta Patents Patent Law -


Subject of this appeal is the date of public availability of an internet disclosure and whether the Examining Division should have allowed evidence with respect to the publication date of this disclosure into the proceedings. Although the Board describes somewhere in its decision that the Boards of Appeal of have a huge backlog, this Board spent quite some time on writing a nice "lesson" on determining the date of availability to the public of internet disclosures and how the balance of probabilities must be applied in those cases. Of course, the Board has to provide a well-reasoned decision - somehow I have the feeling that the lesson is also written for the Examining Division because it seems that the Board was not completely happy with their work.
Reasons for the Decision
[...]

Overview

2. The contested decision is based on the assumption that document D1, an Internet disclosure, belongs to the prior art. Documents presented by the appellant in the oral proceedings in order to show that there was no sufficient basis for this assumption were not admitted as late-filed. Consequently, no consent was given under Rule 86(3) EPC 1973 to amending the application in accordance with the main request, i.e. reverting to the originally filed claims, and the then auxiliary request was found to lack inventive step over document D1 as closest prior art.
3. The appellant maintains that the Examining Division committed a procedural violation by relying on a document without properly ascertaining its status as prior art and by not admitting the appellant's evidence to the contrary (see section XI above). In the following, the Board will therefore assess whether, in the light of the general principles concerning the standard of proof with respect to Internet disclosures (see points 4 to 11 below), the Examining Division acted correctly when raising objections based on document D1 (see points 12 to 19 below) and refusing to admit documents E1 to E3 in the oral proceedings (see points 20 to 27).
Internet disclosures and standard of proof
4. The boards of appeal have dealt with issues relating to the reliability of Internet disclosures on several occasions. The crux of the matter is adequately summarised in the following passage of the Guidelines for Examination in the EPO (November 2016) [in the following: "Guidelines"], G-IV, 7.5.1:
"The nature of the Internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated, yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public - including examiners - to establish precisely what was published and when."
5. In decision T 1134/06 of 16 January 2007 (point 4.1), the Board held that, in order to establish that an Internet disclosure formed part of the state of the art, the same strict standard of proof as for prior use or prior oral disclosure, i.e. "beyond any reasonable doubt", had to be applied (see also decision T 373/03 of 2 September 2005, point 3.3). Circumstances which allowed the determination of availability to the public might also include factors that had a bearing on the reliability of the information, e.g. the manner in which information had been procured and date-stamped, how it had been preserved by the source, and whether it had remained unaltered since deposit.
6. Although this decision was cited with approval in some other decisions (see T 1875/06 of 8 January 2008, point 9; T 19/05 of 15 February 2012, point 2.3.2), its conclusions did not remain uncontested. Decisions T 286/10 of 21 May 2014 (points 2 to 2.3) and T 2227/11 of 18 February 2016 (point 2) did not find any justification for the application of the strict standard of proof beyond any reasonable doubt. Rather, only a sufficient degree of probability leading to the boards' conviction that a fact has occurred was considered to be required. The yardstick of balance of probabilities was also applied in the context of Internet disclosures in decisions T 990/09 of 3 July 2012 (points 10 to 12) and T 2339/09 of 17 November 2011 (point 2).
7. It is no easy task to try to reconcile the different views expressed in the appeal case law about the proper standard of proof relating to the issue of availability to the public, in particular with respect to Internet disclosures. However, any such attempt has to respect the European Patent Convention's overarching principle of free evaluation of evidence (see decision G 1/12, OJ EPO 2014, A114, point 31, with further references), which would be contradicted by laying down firm rules of evidence defining the extent to which certain types of evidence were, or were not, convincing. Instead, the question whether a fact can be regarded as proven has to be assessed on the basis of all the relevant evidence (G 3/97, OJ EPO 1999, 245, point 5).
8. While the above-described standards of proof clearly differ on a conceptual level, in most cases adhering to one or the other in judicial practice does not need to lead to divergent results if the standard of "balance of probabilities" is applied with some qualification. In particular, the latter should, in the Board's view, not be misunderstood as implying that a fact has to be regarded as already proven when it has a probability which is "just tipping the balance slightly", for instance, a probability of 51% (if it were at all possible to express probabilities in this context in mathematical terms).
9. Although the standard of balance of probabilities has occasionally been paraphrased as meaning that one has to assess whether one set of facts is more likely to be true than the other (see T 381/87, OJ EPO 1990, 213, point 4.4.b)), such a literal interpretation of "balance" does not, in the Board's view, properly reflect the long-standing judicial practice of the boards of appeal in determining whether a particular piece of information has become publicly available. It may not be possible to identify a single decision where a patent was refused or revoked on the basis of prior art, be it a written disclosure, an oral disclosure or a prior use, because its availability to the public had been found to be just slightly more likely than its non-availability. Even in the above-cited case T 381/87, which appears to have been seminal for the development of the "balance of probabilities" standard, the board found (see point 4.4 a)) that on the evidence - two letters from a librarian of a renowned institution written with full regard as to the potential serious nature of their contents - it was "clearly much more likely that document (A) was placed on the open shelves of the Library on 26 November 1981, than that it was not so placed" and that "[a]ny uncertainty [was] of a minimal nature".
10. There are numerous decisions which refer to and apply the standard of balance of probabilities, but interpret it in a manner which does not leave any doubt that just slightly tipping the balance of probabilities is not sufficient when assessing the public availability of prior art. An often-cited case is T 750/94 (OJ EPO 1998, 32), which in point 4 of its reasons stated the following:
"When an issue of fact is being examined and decided by the EPO on the balance of probabilities, the more serious the issue the more convincing must the evidence be to support it. If the decision upon an issue under examination may result in refusal or revocation of a European patent, for example in a case concerning alleged prior publication or prior use, this means that the available evidence must be very critically and strictly examined, for example in order to ascertain whether or not something happened (the alleged prior publication or prior use) before the relevant filing or priority date. [...] A European patent should not be refused or revoked unless the grounds for refusal or revocation are fully and properly proved".
Corresponding reasoning can be found e.g. in the more recent decision T 526/12 of 31 August 2015, point 2.2, assessing the public availability of an Internet disclosure.
11. Thus, the facts on which any finding of public availability is based must be established with a sufficient degree of certainty in order to convince the competent organ of the EPO in view of all the relevant evidence that they have indeed occurred. This holds true even if the determination is made on the basis of probabilities and not on the basis of absolute certainty ("beyond any reasonable doubt"). It is thus correctly stated in the Guidelines (G-IV, 7.5.2) with respect to Internet disclosures:
"The standard for assessing these circumstances is the balance of probabilities. According to this standard, it is not sufficient that the alleged fact (e.g. the publication date) is merely probable; the examining division must be convinced that it is correct."
The objection based on document D1 raised in the written proceedings
12. It is a general principle that, when raising objections, the burden of proof lies initially with the examining division. This means that objections must be reasoned and substantiated, and must show that, on the balance of probabilities, the objection is well-founded (see Guidelines, G-IV, 7.5.3). With respect to the publication date of a cited document, at least prima facie evidence is required. Prima facie evidence means evidence which is sufficient, on its own, to establish a fact or to raise a presumption of the truth of a fact unless controverted (see T 750/94, point 6; T 526/12, point 1.4). Thus, not every indication or hint qualifies as prima facie evidence.
13. If the objection is properly raised, it is then up to the applicant to prove otherwise or to at least submit evidence to displace the prima facie evidence. If the applicant successfully challenges prima facie evidence concerning a fact, e.g. the nominal publication date of a document, the burden of proof shifts back to the examining division to establish that the document was made available to the public (see e.g. T 929/94 of 7 July 1998, point 2.1).
14. In the present case, according to the international search report, document D1 was retrieved from the Internet on 15 December 2003, i.e. more than 18 months after the priority date of the application (24 May 2002). Neither the report nor the first communication pursuant to Article 96(2) EPC 1973, which cited document D1, contained any explanation as to why the document was considered to have been publicly available before the priority date.
15. In the context of Internet disclosures, such an absence of explanations is acceptable only where, in view of the circumstances of the case, it is self-evident - or at least easily understandable - why the document is considered to have become publicly available before a specific date. Those circumstances may include the nature, in particular the reliability, of the website from which the document was retrieved as well as intrinsic evidence deduced from information provided in the document itself.
16. Document D1 was retrieved from an Internet site with the address www.innovative-consult.com. It consists of 13 pages. Its front page contains the title ("Oracle9i, ETL from the Database Out for Free"), a date ("January, 2002"), a firm logo with the text "innovative consulting IntelligentSolutionsforyourBusiness" and an address. The last page gives some information on the author (Daniel White), who is said to be a technology consultant with Innovative Consulting, a Pennsylvania-based professional services firm specialising in strategy consulting and implementation of high-performance business intelligence and data warehousing solutions. The last page also carries a copyright notice ("© 2001 Innovative Consulting Inc. ...)". There are no passages in the document indicating that, prior to its publication on the Internet, copies of it were made available to members of the public.
17. The only circumstantial evidence on which the International Searching Authority and the Examining Division apparently implicitly relied for its assumption that document D1 was made publicly available in January 2002 is the date on the cover page of the document. However, this date is not only imprecise, but also unqualified. In particular, the document does not specify the date as its date of publication. The indication of the date can therefore at best be considered as prima facie evidence that the document was created in January 2002, but not that it was made available to the public on that date (see also T 373/03, point 3.3).
18. Furthermore, the commercial website from which document D1 was retrieved cannot be considered, at least not without further investigations, as a source generally deemed to provide reliable publication dates, such as the websites of scientific publishers. Thus, irrespective of the standard of proof to be applied, i.e. "balance of probabilities" (see points 9 to 12 above) or "beyond any reasonable doubt", neither the information provided in document D1 itself nor its source of retrieval allowed, on their own, to conclude with a sufficient degree of certainty that the document was publicly available in January 2002. There was no prima facie evidence to rely on.
19. It follows that the Examining Division was not entitled to consider document D1 as prior art in its first substantive communication without providing further explanations and evidence as to the document's public availability before the priority date (see also T 1961/13 of 16 September 2014, point 5.1.6). Thus, the objection was not properly raised. It could not generate an obligation on the applicant's side to submit evidence against the assumed publication date in the written proceedings.
Refusal to admit documents E1 to E3 as evidence
20. While prior to the oral proceedings the appellant did not argue against the Examining Division's assumption that document D1 was prior art and, in its reply to the first communication, even amended the original claims in order to overcome the objections raised, it contested the assumption at the oral proceedings and submitted documents E1 to E3 (see below) as evidence to the contrary.
21. Document E1 contains a version of document D1 retrieved as a pdf file from the Internet site www.archive.org. It also contains a printout of the document's properties in German, according to which it was created ("erstellt") on 15 January 2002 at 15:32 and modified on 15 January 2002 at 16:06. The printout names "L Eliott" as creator ("Verfasser"). The appellant argued that document E1 supported its view that January 2002 was only the creation date, and not the publication date, of D1.
22. Document E2 was said to be a printout of a search carried out by the applicant on the website www.archive.org of the Internet Archive Wayback Machine with respect to the URL of D1 and for the time period from 1 January 2002 to 31 December 2003. The search results show no record of the URL of D1 in 2002 and only one page in 2003. The appellant argued that, since the Wayback Machine had not archived document D1 during the period between its creation and the priority date of the application, this was evidence that the document had not been published in that period.
23. Document E3 was said to be a printout of various web pages of the website http://www.innovative-consult.com archived by the Wayback Machine. The appellant argued that they did not provide any hint that document D1 had been published on this website, so that D1 should not be regarded as prior art.
24. The Examining Division did not admit the new evidence pursuant to Rule 71a EPC 1973 for the reason that otherwise it could not come to a final conclusion without further investigations, so that the end of the procedure would be delayed. Moreover, prima facie none of the evidence submitted appeared to clearly establish that D1 had not been published before the priority date. The fact that the pdf file had been created on 15 January 2002 could instead be seen as a step towards the publication of the underlying Word document, because the pdf format was more suitable for publication. The fact that the Wayback Machine had not archived the pdf version of D1 under the URL used in the search report was not proof that the document had not been published earlier on the Internet using a different URL, because websites were frequently reorganised, or published in another form (e.g. as printed paper). Finally, no convincing conclusions could be drawn from the absence of a reference to D1 on printouts of some archived pages of the website www.innovative-consult.com. The Examining Division further noted that D1 had been authored by a consulting company, which could be expected to disseminate D1 to its clients, i.e. to make it available to the public.
25. It is well established in the case law of the boards of appeal that Articles 113(1) and 117(1) EPC enshrine the basic procedural right to give evidence in appropriate form, specifically by the production of documents, and to have that evidence heard. Failure to consider evidence will normally constitute a substantial procedural violation in that it deprives a party of this basic right (see e.g. T 1110/03, OJ EPO 2005, 302, point 2.4, and T 2294/12 of 12 January 2016, point 1.1.3). Nevertheless, according to Article 114(2) EPC, facts and evidence which are not submitted in due time by the parties concerned may be disregarded. Rule 71a(1) EPC 1973 (which corresponds to Rule 116(1) EPC) stipulates that, when the EPO issues a summons for oral proceedings, a final date for making written submissions in preparation for the oral proceedings has to be fixed and that new facts and evidence presented after this final date need not be considered.
26. The discretionary power given by Rule 71a EPC 1973 (and Rule 116 EPC) is governed by Article 114(2) EPC. In ex parte proceedings, this discretion has to be exercised by considering all the relevant factors which arise in a particular case and by balancing the applicant's interest in obtaining proper patent protection for his invention against the EPO's interest in bringing the examination procedure to a speedy close by the issue of a decision (see T 755/96, OJ EPO 2000, 174).
27. When exercising its discretion in the present case, the Examining Division should have been aware that, although it had cited document D1 at the beginning of the examination procedure, it had never provided any further explanations and evidence as to the document's public availability before the priority date, so that the objections based on this document had not been properly raised before. Moreover, the arguments provided by the Examining Division for the exercise of its discretion are not persuasive. In particular, it is difficult to see why the fact that D1 was authored by a (consultant of a) consulting firm was taken as a hint for a specific publication date. Nor can this fact be a sufficient basis for the assumption that D1 was disseminated to clients in the relatively short period between the creation date of the pdf file (15 January 2002) and the priority date of the present invention.
28. Under these circumstances, the Examining Division was not allowed to reject the appellant's further evidence as late-filed and to continue to rely on document D1 as prior art. It thereby infringed the appellant's right to be heard (Article 113(1) EPC in conjunction with Article 117(1) EPC). This procedural deficiency was causal for the contested decision, as the Examining Division itself recognised that, when admitting the evidence, it could not have come to a final conclusion without further investigations.
Consequences of the procedural deficiencies
[...]

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
This decision T 545/08 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T054508.20170324. The file wrapper can be found here. Photo "Gold Scales of Justice" by Kittisak obtained via FreeDigitalPhotos.net (no changes made).

Pre-Exam 2017: results

Delta Patents Pre-Exam -

Earlier today, the Examiner's Report was published, and now also the results are out and available on the EQE website here.

884 candidates enrolled for the Pre-Exam 2017, out of which 860 also sat the paper (97%).
672 candidates passed, corresponding to 76% of all enrolled candidates and 78% of all candidates that sat the exam. Congratulations!
188 candidates failed, corresponding to 21% resp. 22%.
The pass rates are thus similar as in 2016 and 2015.


The pass rate is considerably lower for resitters:

  • 105 Pre-Exam 2016 candidates were resitting: 53 passed, 52 failed again
  • 54 Pre-Exam 2015 candidates were resitting: 21 passed, 33 failed again
  • 17 Pre-Exam 2014 candidates were resitting: 7 passed, 10 failed again
  • 36 candidates that sat Pre-Exam 2015 and 2016 were resitting: 17 passed, 19 failed again
  • 9 candidates that sat Pre-Exam 2014, 2015 and 2016 were resitting: 6 passed, 3 failed again
  • 5 candidates that sat Pre-Exam 2014 and 2015 but not 2016 were resitting: 1 passed, 4 failed again


T 737/11 - Decision according to the state of the file leaves it to speculate on the applicable reasons by mosaicking various objections and arguments

Delta Patents Patent Law -


In examination proceedings, the applicant requested an appealable decision according to the state of the file. The Examining Division issued the decision with its grounds as follows: "In the communication(s) dated 22.07.2010, 25.10.2010 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein. The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.11.2010. The application must therefore be refused."  The decision does not mention the oral proceedings that were held. The communications referred to related to different requests.
The Board concludes that in the present case considerable uncertainty exists as to the precise reasons on which the contested decision was based. The written decision leaves it to the appellant and the Board to speculate on the applicable reasons by mosaicking various objections and arguments from two communications and possibly other elements of the file, such as the minutes of the oral proceedings - to which the written decision does not even refer. It is therefore not reasoned within the meaning of Rule 111(2) EPC. This amounts to a substantial procedural violation according to Rule 103(1)(a) EPC and to a fundamental deficiency according to Article 11 RPBA

Summary of Facts and Submissions

I. The applicant, which at the time was Microsoft Corporation, appealed against the decision of the Examining Division refusing European patent application No. 05108534.8.

II. In the proceedings leading to the refusal, the Examining Division issued a communication, together with a summons to oral proceedings pursuant to Rule 115(1) EPC, on 22 July 2010. According to this communication (hereafter: "communication A") the examination had been carried out on the claims of the sole request submitted with the applicant's letter of 20 November 2008.

(a) Claim 1 of this request reads as follows (reference signs omitted):

[...]

(b) Communication A contained several objections relating to different requirements of the EPC. It began with objections under Article 83 EPC focusing upon two features, i.e.

"..." (hereinafter: "feature F1") and

"... (...)" (hereinafter: "feature F2").

Neither feature F1 nor the terms in the brackets of feature F2 were part of claim 1 of the applicant's sole request. The Examining Division stated that feature F1 was described in the application as an essential feature and cited a passage of the description for the terms added in the brackets of feature F2. It then gave reasons why the skilled person would not have been able to carry out features F1 and F2.

(c) Communication A furthermore raised various clarity objections under Article 84 EPC. Apart from considering some features of the claims on file to be unclear, it also contained two lists of three steps each (see point 3.3 of the communication for the first list and point 3.4 for the second list) and maintained that all those steps were essential features which had to be included in any independent claim. Step 1 of the second list was identical to feature F1 above.

(d) The communication also contained detailed objections under Article 56 EPC (lack of inventive step). In the context of this analysis the Examining Division presented a further list of eight features which in its view were essential features of the present application.

III. The appellant reacted to this communication by submitting arguments, a new main request and a new auxiliary request. Claim 1 of the main request reads as follows (reference signs omitted):

"..."

IV. The Examining Division sent out a further communication dated 25 October 2010 (hereafter "communication B"). It essentially consisted of a rebuttal of the appellant's arguments with respect to the objections under Article 83 EPC.

(a) Although it cited the appellant's newly filed requests as the application documents on which the examination had been carried out, it did not explain how the objections related to the specific claims of the requests. Rather, it reiterated and expanded on its opinion that features F1 and F2 were not sufficiently disclosed to enable a skilled person to implement them. In this context it referred back to that passage of communication A (see section II(c) above) where, in the assessment of the requirements of clarity (Article 84 EPC), three steps, i.e. steps 1 to 3 of the second list, had been enumerated as essential features.

(b) With respect to the requirement of inventive step, communication B contained on page 1 an introductory remark to the effect that an amendment of the claims based on the description as originally filed in order to arrive at inventive subject-matter seemed impossible. It furthermore stated as a "general remark" that since the present application did not fulfil the requirements of Article 83 EPC there was at present no need to examine the subject-matter of the claims according to the main and first auxiliary requests with regard to inventive step (see communication B, point 2).

(c) The communication furthermore announced that, should the applicant ask for a decision on the state of the file without filing further requests, amendments or comments, the application would then be refused "based on the above arguments taken in combination with the arguments provided in the summons" (see communication B, point 3).

V. The applicant subsequently withdrew its request for oral proceedings and requested an appealable decision according to the state of the file.

VI. Oral proceedings were held on 9 November 2010, as scheduled, in the absence of the applicant. At the end of the oral proceedings, the chairman announced the Examining Division's decision. According to the minutes of the oral proceedings (see EPO Form 2906), the chairman refused the application under Article 97(2) EPC according to the state of the file, because the subject-matter of the independent claims of both the main and auxiliary requests did not meet the requirements of the EPC for the reasons set out in the brief communication and the summons to oral proceedings. Moreover, the minutes stated that it was noted that the objections with regard to the requirements of Article 83 EPC as raised in the "brief communication" were clear and complete, the "brief communication" being identified as the communication issued on 25 October 2010, i.e. communication B. The minutes furthermore specified on Form 2009.2 that the chairman had announced the decision to refuse the European patent application on the ground that the application did not meet the requirements of Article 83 EPC.

VII. On 12 November 2010 the Examining Division issued a decision "according to the state of the file" on EPO Form 2061. This decision does not mention the oral proceedings held earlier. Its grounds are as follows:

"In the communication(s) dated 22.07.2010, 25.10.2010 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.

The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.11.2010.

The application must therefore be refused."

VIII. With the statement of grounds of appeal, the appellant resubmitted the main and auxiliary requests pending when the decision "according to the state of the file" was issued. The appellant argued inter alia that the independent claims of the main request did not comprise any of the features to which the Examining Division had objected under Article 83 EPC and that the decision was hence not justified. The appellant also addressed objections under Articles 84 and 56 EPC set out in the first communication. With the grounds of appeal the appellant filed the following document:

D5: "XSL Transformations (XSLT) Version 1.0, W3C

Recommendation 16 November 1999", excerpt: 7 pages.

IX. In the course of the appeal proceedings, the application was transferred to Microsoft Technology Licensing, LLC, which thereby obtained the status of appellant.

X. In a communication under Rule 100(2) EPC, the Board expressed the provisional opinion that the reasons supporting the contested decision were unclear, as it could not be ascertained which reasons were provided with respect to the pending requests. Consequently, as fundamental deficiencies were apparent in the proceedings (Article 11 RPBA), the Board intended to remit the case to the department of first instance and to reimburse the appeal fee. In view of the age of the application, the Board nevertheless considered the merits of the only recognisable reasons for the decision and expressed the view that none of the objections possibly raised under Article 83 EPC was convincing. Moreover, the appellant was asked to clarify its requests in the light of the Board's communication.

With a letter dated 17 November 2016, the appellant submitted new requests replacing all prior requests. Its new (procedural) main request was "to set the appealed decision aside, to remit the case for further examination to the Examining Division, and to reimburse the appeal fee". In the context of the procedural situation as a whole, the Board understands that the substantive main and auxiliary requests underlying the contested decision have not been withdrawn.

Reasons for the Decision

Admissibility of appeal

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Deficiencies of the contested decision

2. Rule 111(2) EPC provides that decisions of the European Patent Office which are open to appeal (including decisions "according to the state of the file") must be reasoned. This provision has been interpreted by the boards of appeal as requiring a reasoning which enables the appellant and the board to examine whether or not the decision was justified. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must therefore be contained in the decision.

2.1 The contested decision is a decision on the state of the file. It is thus in a standard form and does not itself specify the grounds on which it is based; it simply refers to preceding communications where corresponding objections were raised (see Guidelines for Examination in the EPO, E-IX 4.4). According to well-established case law of the boards of appeal, a decision drafted using this standard form complies with the requirement that a decision be reasoned pursuant to Rule 111(2) EPC only if certain conditions are fulfilled. In particular, the examining division must have fully expressed and reasoned its objections in the cited preceding communication or communications, taking into account all relevant arguments put forward by the applicant.

2.2 Moreover, specific problems may arise when a decision on the state of the file refers to several preceding communications in which different objections were raised. Such a decision often causes at least some uncertainty about the reasons on which the refusal decision relies. The danger of uncertainty increases if the claim sets submitted by the applicant change between the communications referred to. It has therefore been held in numerous appeal decisions that a decision on the state of the file does not meet the requirements of Rule 111(2) EPC if it leaves it up to the applicant and the board of appeal to construe the applicable reasons by mosaicking various objections and arguments from several communications, or if it creates doubts as to which objections apply to which claim version (see Case Law of the Boards of Appeal, 8th edition 2016, III.K.4.3.2). This case law is reflected in the following passage of the Guidelines for Examination in the EPO (November 2015), C-V, 15.2:

"Although it is possible by way of exception to refer to more than one communication in the standard form, the examiner should carefully consider the requirements of Rule 111(2). In particular, if the different communications deal with different sets of claims, such that it is not clear which of the reasons given by the Examining Division in its communications might be essential to the decision to refuse, a fully reasoned decision should be issued instead (see C-V, 15.3)."

3. The contested decision merely refers for its reasons to the communications dated 22 July 2010 and 25 October 2010, i.e. communications A and B. Between these two communications the appellant filed a new main request and a new auxiliary request (see section III above). Both new requests differed substantially from the sole request with which communication A was concerned. This prima facie creates doubts as to the extent in which the objections raised in communication A are still relied on by the Examining Division in its refusal decision. The Board therefore assesses in the following whether the present case may be regarded as exceptional in that a combined reading of both communications would make it possible to determine with sufficient certainty the reasons on which the decision is based.

3.1 Communication A raised several objections under Articles 83, 84 and 56 EPC (see section II above). In different parts of it, various features were identified as "essential features" of the invention and regarded as mandatory for the formulation of any independent claim. The discussion of Article 83 EPC focused on two features, i.e. features F1 and F2, which were not (for feature F1) or not completely (for feature F2) part of claim 1 of the then pending sole request. One of these features (F1) was considered to be an "essential feature".

3.2 Although communication B (see section IV above) correctly cited the appellant's new requests, it is wholly unclear whether they were considered in substance. The objections raised under Article 83 EPC did not refer to the claims of the new requests but focused again on features F1 and F2. However, these features are not contained in the independent claims of the new main request, so that it is not self-evident why the objections raised under Article 83 EPC are relevant for the new main request. The Examining Division argued in communication B that both features F1 and F2 were essential (see communication B, points 1.3 and 1.4), referring to point 3.4 of communication A, where it had objected to certain features of claim 1 of the previously pending request as lacking clarity and had listed three steps as essential, one of these steps being feature F1. Since point 3.4, however, did not contain any observations with respect to feature F2, the reference to this point in communication B is confusing.

3.3 Furthermore, a combined reading of both communications leaves considerable uncertainty about the relevance of other objections raised in communication A. Although communication B stated that there was no need to examine the subject-matter of the new requests with respect to inventive step, it also contained an introductory remark to the effect that an amendment of the claims based on the description as originally filed in order to arrive at inventive subject-matter seemed impossible (see section IV(b) above).

3.4 With respect to Article 84 EPC, the situation is even worse. Communication A raised numerous objections under this provision, arguing partly that some features of the claims then on file were unclear, partly that several features that were not part of the independent claims had to be included in them since they were "essential features". It also mentioned further features as essential in its inventive-step analysis (see section II(c) and (d) above). It is neither stated in communication B nor self-evident that all these objections were no longer to be regarded as pertinent by the Examining Division.

3.5 The written decision does not mention at all that oral proceedings had taken place on 9 November 2010 and that in these oral proceedings the Examining Division's chairman had already announced the decision (see section VI above). This amounts to a procedural deficiency in itself since a written decision should in principle be self-contained and make it clear whether the decision was taken following written proceedings or taken in oral proceedings. This is necessary in view of the procedurally crucial distinction between decisions of both kinds, e.g. as regards the point in time when a decision becomes effective (see decision G 12/91, OJ EPO 1994, 285, reasons 2).

3.6 Since the written reasoning of the contested decision fails to mention the oral proceedings and to refer to their minutes, it is not possible to interpret the reasons of the decision in the light of these minutes. It may well be that the Examining Division wished to refuse the application only for not complying with Article 83 EPC, as implied by the minutes of the oral proceedings. However, the reasons it provided in its decision by merely referring to communications A and B do not make this clear at all.

3.7 The Board concludes that in the present case considerable uncertainty exists as to the precise reasons on which the contested decision was based. The claims were amended substantially between the two communications to which the written reasoning of the contested decision refers. No exceptional case is apparent in which a combined reading of the communications would make it possible to determine the reasons with sufficient certainty. On the contrary: additional uncertainty arises since the objections under Article 83 EPC were interlinked with objections under Article 84 EPC, the features of the independent claims of the new requests were not explicitly addressed in communication B, numerous objections under Article 84 EPC raised in communication A were neither pursued further nor considered as overcome or as obsolete in communication B, and doubts remain even with respect to the relevance of inventive-step objections. In particular, from the written reasoning of the contested decision, it cannot be ascertained whether the application was refused only under Article 83 EPC or also under Article 84 EPC for lack of essential features and, if so, which features were considered essential. Furthermore, the reasoning with respect to Article 83 EPC was based on features F1 and F2 without explaining against which claims the objections were raised or how those two features related to the subject-matter of each of the new requests.

3.8 The written decision therefore leaves it to the appellant and the Board to speculate on the applicable reasons by mosaicking various objections and arguments from two communications and possibly other elements of the file, such as the minutes of the oral proceedings - to which the written decision does not even refer. It is therefore not reasoned within the meaning of Rule 111(2) EPC. This amounts to a substantial procedural violation according to Rule 103(1)(a) EPC and to a fundamental deficiency according to Article 11 RPBA.

3.9 The presence of fundamental deficiencies in the first-instance proceedings normally leads to a direct remittal to the department of first instance (see Article 11 RPBA). In view of the age of the application, the Board will nevertheless in the following give its opinion on the only recognisable reason for the refusal decision, i.e. the objection of insufficient disclosure under Article 83 EPC.

Article 83 EPC

4. In the context of Article 83 EPC, the decisive question is whether the original application disclosed, at the filing date, sufficient details to enable a skilled person to carry out, without undue burden, the invention as defined in the claims. According to the established case law (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, II.C.6.1.4), an objection of insufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts.

4.1 The invention as described in the application concerns the processing of a web-based data form object. A data form is a section of a document containing normal content, markup, special elements called form controls (such as checkboxes, radio buttons, menus), and labels on the controls. Users generally complete a data form by modifying the form controls (for example, by entering text or selecting menu items) before submitting the data form for processing. Each form control has both an initial value and a current value. A form control's initial value may be specified with a value associated with the form control. The form control's current value is first set to the initial value. Thereafter, it may be modified through user interaction. However, according to the description of the background of the invention, the user's interaction with dynamic data from a data source was limited to read-only functionality with the data source.

4.2 According to the invention, a web-based data form enables modifications made to values in a data form to be dynamically reflected in a data source. Form fields of the data form are associated with records in the data source (such as an Extensible Markup Language (XML) file or a database) using data-binding information. When a new value is entered in a form field, the data-binding information is updated. If the updated data-binding information does not correspond to the value of the corresponding record in the data source, the data source is updated.

4.3 The objections under Article 83 EPC raised by the Examining Division in its communications A and B focused on features F1 and F2 (see sections II(b) and IV(a) above). None of these features is included in the independent claims of the appellant's substantive main request pending at the time the refusal decision was taken and maintained in the appeal proceedings.

4.4 Feature F1 is about the transformation of XML data associated with the requested web page into intermediate code using XSLT. While, as stated above, this feature is not part of the independent claims of the main request cited in communication B, the Board notes that some of the dependent claims (see claim 3, 4, 8 and 10 of the main request cited in communication B) contain features similar to it in that they include a transformation of XML data into intermediate code using XSLT.

4.4.1 It was argued in communication A that according to the Guidelines C-II 4.9 a detailed description of at least one way of carrying out the invention had to be given in the application as filed, with a single example possibly being sufficient. However, the present application provided "no examples of corresponding XSLT code nor of any intermediate code".

4.4.2 The Board cannot see any compelling reason why it would have been necessary in the present case to disclose specific examples of code in the application, and the Examining Division did not clearly explain in the decision why in its view this was necessary. Reference is made to the Guidelines for Examination in the EPO (November 2015), F-II, 4.12 which read as follows:

"4.12 Computer programs

In the particular case of inventions in the computer field, program listings in programming languages cannot be relied on as the sole disclosure of the invention."

This passage of the Guidelines which the Board endorses in principle makes it clear that program code should not be relied on as the sole disclosure. The appealed decision's argument (see communication A, point 1.1) considering examples of program code as necessary in order to meet the requirements of Article 83 EPC is therefore not convincing.

4.4.3 The Examining Division did not point out any particular technical difficulties for a skilled person in carrying out the claimed invention. It appears to have argued in essence that the disclosure did not provide sufficient technical details and in particular no examples for the generation of intermediate code using XSLT. The Examining Division argued that neither examples of corresponding XSLT code nor examples of any intermediate code were disclosed in the application, so it was not clear how to generate intermediate code compatible with Microsoft's ASP.NET functionality.

Apart from the fact that the independent claims of the main request cited in communication B do not specify that the intermediate code has to be compatible with ASP.NET functionality, it is not discernible which specific features of XML or ASP.NET would, in the Examining Division's opinion, cause particular technical difficulties for implementing an XSLT transformation generating ASP.NET-compatible intermediate code.

4.4.4 The Board sees no reason to doubt that a skilled person was able to implement an XSLT transformation to transform XML data into intermediate code. In the Board's understanding it is not excluded that such an intermediate code comprises XML data. As stated explicitly in document D5 (see abstract, paragraph 1), XSLT is a language for transforming XML documents into other XML documents. Hence, D5 supports the appellant's arguments that feature F1 is disclosed in an enabling manner.

4.5 Feature F2 is about expanding form controls to include the modified values by evaluating the XSLT code associated with the form controls. The Examining Division's communication A considered it to be unclear how the expansion of the form controls using XSLT was to be carried out. However, feature F2 is not verbatim part of any claim of the appellant's requests which were already pending when the refusal decision was taken. In particular, the term "expansion" is no longer used in the claims. Moreover, the Board does not doubt that a skilled person would be able to carry out a modification of a form control to include modified values. Storing a modified value as current value of a form control can be implemented in a number of ways by a skilled person, even without any further disclosure of details of an exemplary implementation.

4.6 For the reasons set out above, the Board concludes that the objections raised by the Examining Division in communications A and B with respect to Article 83 EPC are not convincing and do not preclude the allowability of the requests cited in these communications.

Remittal and reimbursement of the appeal fee

5. In view of the procedural deficiencies mentioned above (see point 3.8), the case is to be remitted to the department of first instance for further prosecution. The Board considers the reimbursement of the appeal fee to be equitable in a situation where, as here, the reasons given for the contested decision were so unclear that no final decision could be taken in the appeal proceedings (Rule 103(1)(a) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is to be reimbursed.

This decision T 737/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T073711.20170313. The file wrapper can be found here. Photo "Building Mosaic" by Monik Markus obtained via Flickr under CC BY 2.0 license (no changes made).

T 577/11 Entitlement to priority; transfer of priority right

Delta Patents Patent Law -

In this case, the Board goes very deep into the issue of the entitlement to claim priority by a successor in title. In particular: when does the actual transfer need to take place? Could the EPO recognize a retroactive transfer if a national law would allow that?
The answer: strict - the actual transfer must have been completed before the priority is claimed. 

Catchword:

1. Continuation of the appeal proceedings after first oral proceedings before the board with the scheduling of second oral proceedings is not, as such, a reason for admitting new submissions filed after the first oral proceedings (see Reasons, point 2.3).

2. If the debate on a particular topic had been closed without announcement of a decision on the matter, the board has discretion over whether or not it re-opens the debate and over the extent to which it does so (see Reasons, point 3.1).

3. For a claimed priority to be valid pursuant to Article 87(1) EPC 1973, the applicant of a subsequent application claiming priority from an earlier application (priority application) who is not the person who filed the priority application must, when the subsequent application is filed, be that person's successor in title in respect of the priority application or of the right to claim priority. A succession in title that occurs after the filing date of the subsequent application is not sufficient to comply with the requirements of Article 87(1) EPC 1973 (see Reasons, point 6.5).

4. Where the applicant of the priority application and the applicant of the subsequent application contractually agree that (only) economic ownership ("economische eigendom" under Dutch law) of the priority application and the right to claim its priority is to be transferred to the subsequent applicant, this is not sufficient to consider the latter a successor in title within the meaning of Article 87(1) EPC 1973 (see Reasons, point 6.6.2).


Summary of Facts and Submissions

I. On 4 March 2011 the appellant (patent proprietor) lodged an appeal against the decision of the opposition division, posted on 21 January 2011, by which European patent No. 1 540 227 was revoked. The statement setting out the grounds of appeal was filed on 26 May 2011.

II. The documents referred to in the present decision include the following: [...]

III. European patent application No. 03 793 808.1, which matured into the European patent mentioned above, was based on international application PCT/EP2003/009870 (published as WO 2004/023020). This international application filed under the PCT [hereinafter referred to as "international application" or "subsequent application"], for which the EPO acted as designated Office, had been filed in the name of Tenaris Connections AG as applicant for all designated states except the United States of America and of five natural persons as applicants for the United States of America on 6 September 2003. Priority was claimed from Italian application No. RM2002A000445 of 6 September 2002 [hereinafter referred to as "priority application"], filed in the name of Tenaris Connections BV. The declaration of priority was submitted upon filing of the subsequent application by indication of the priority data in the dedicated section of PCT request form PCT/RO/101. No declaration as to the applicants' entitlement, at the international filing date, to claim the priority of the earlier application (see Box VIII(iii) of Form PCT/RO/101) was submitted upon or after the filing of the subsequent application.

Patent assignment agreement D19 [hereinafter referred to as "Agreement"] between Tenaris Connections·BV, a corporation organised and existing under the laws of the Netherlands (assignor), and Tenaris·Connections AG, a corporation organised and existing under the laws of the Principality of Liechtenstein (assignee), concerning inter alia the assignment of the rights of said Italian patent application, the rights to the invention and the priority right (section 1 of the Agreement), was entered into as of 19 September 2003. Section 4 of said Agreement reads:

"This Agreement has a retroactive effect to commence as from January 1, 2003. As from the effective date the ASSIGNEE is considered the sole and exclusive owner of the Patents."

IV. The opposition division held that the invention claimed in claim 1 of the main request then on file was disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC in combination with Article 83 EPC), but that the subject-matter of said claim did not meet the requirements of Article 100(c) EPC in combination with Article 123(2) EPC.

The opposition division was of the opinion that priority had been validly claimed, since Agreement D19 proved that the transfer of rights, including priority rights, took place with effect from 1 January 2003, which was before the filing date of the later European application. Document D1 was therefore comprised in the state of the art according to Article 54(3) EPC.

The opposition division further held that claim 1 of the first and second auxiliary requests filed during the oral proceedings before the opposition division on 7 December 2010 did not contain subject-matter which extended beyond the content of the application as filed (Article 100(c) EPC in combination with Article 123(2) EPC), but that the subject-matter of said claims did not involve an inventive step with respect to document D2 (Article 56 EPC).

V. In its statement of grounds of appeal, the appellant did not address the validity of the claimed priority.

In its reply, the respondent contested the validity of the claimed priority.

VI. At the appeal stage, the appellant requested that its name and address be changed in the European Patent Register. It was submitted that the company, incorporated under Liechtenstein law, was permitted to use any of the names "Aktiengesellschaft" (or "AG") and "Limited" (or "Ltd"), that it had been migrated to Saint Vincent and the Grenadines and registered there under the name "Tenaris Connections Limited", and that the registration neither created a new legal entity nor affected the identity or continuity of the company as previously constituted. The entries in the European Patent Register were accordingly changed to "Tenaris Connections Ltd.", with an address in Kingstown, VC.

VI. In a (first) communication accompanying the summons to attend (first) oral proceedings dated 12 May 2015, the board expressed its provisional opinion that, although Agreement D19 including its retroactive effect might be a valid agreement under national law, this could not overcome the fact that it had been concluded after the filing date of the European patent application, and so the priority was not validly claimed (see, in particular, point 5.6 of said communication). The board also indicated that no substantial procedural violations had occurred, that the calling into question of the validity of the priority by the respondent (opponent) could not be considered an abuse of proceedings, that it saw no reason to order a different apportionment of costs (see points 6 and 7 of said communication), that it appeared that claim 1 of the main request met the requirements of Article 123(2) EPC and Articles 83 and 84 EPC 1973 (see points 8 and 9 of said communication) and that the subject-matter of claim 1 of the main request seemed to be new vis-à-vis document D1 (see point 10 of said communication).

VIII. On 29 June 2015 Mr Haedicke filed (first) observations under Article 115 EPC regarding the retroactive transferability of a priority right (D22).

IX. In a letter of 3 July 2015, the appellant addressed inter alia the validity of the claimed priority, relying on legal opinions of Mr Van Engelen (D20) and of Messrs Boscariol and Martucci (D21), as well as on the observations of Mr Haedicke (D22). It was submitted that the assignment as of 9 September 2003 due to Agreement D19, although it had occurred after the filing of the subsequent application, was sufficient for the priority to be considered validly claimed. Secondly, Agreement D19 provided for a retroactive effect. According to another line of argument the priority right had been transferred, in accordance with Italian law, by "carrying out convincing behaviour" between companies of the same group, namely the filing of the subsequent application in the name of Tenaris Connections AG.

X. On 6 July 2015 Mr Oosting filed observations under Article 115 EPC regarding the validity of Agreement D19 under Dutch law (D23a).

XI. On 28 July 2015 the board in the composition provided for by Article 21(4)(a) EPC 1973 and Article 3(1) of the Business distribution scheme of the Technical Boards of Appeals (cf. OJ EPO 2015, Supplementary publication No. 1, II.3) decided to enlarge its composition to three technically qualified members and two legally qualified members in accordance with Article 9 of the Rules of Procedure of the Boards of Appeal (RPBA) and Article 21(4)(b) EPC 1973.

XII. First oral proceedings were held before the board on 3 August 2015.

During those oral proceedings the board came inter alia to the conclusions that the subject-matter of claim 1 of the main request and of the first auxiliary request did not involve an inventive step with respect to document D2 and that the subject-matter of claim 1 of the second auxiliary request involved an inventive step with respect to document D2 and, if the claimed priority were not valid, would not involve an inventive step with respect to document D1. The third auxiliary request was not discussed.

The issues discussed in the oral proceedings further included:

- the validity of the claimed priority,

- the appellant's request for a different apportionment of costs, and

- the substantial procedural violations alleged by the appellant, see minutes, page 5 to page 7, fourth paragraph.

During the oral proceedings the appellant's representative filed the following declaration in support of its allegation that prior to the filing of the subsequent application a transfer of the priority right had been orally agreed upon between Tenaris Connections BV and Tenaris Connections AG:

"I undersigned ... hereby declare that prior to the date of 06.09.2003 I received instructions from the responsible person for IP and my usual contact in the Company Tenaris Connections BV to file a PCT patent application claiming priority of the Italian patent application RM2002A445 in the name of Tenaris Connections AG, with the information that the latter Company was the new owner. I add that the responsible person for IP matters of Tenaris Connections BV was the same as the responsible person for IP of Tenaris Connections AG. I then instructed our paralegal staff to prepare accordingly the PCT patent application which was timely filed on 06.09.2003. Truthfully declared in Munich on 03.08.2015 [SIGNATURE]"

Said declaration was not admitted into the proceedings. The parties confirmed that, if the board were to decide to refer questions to the Enlarged Board of Appeal, they wished to comment on the questions beforehand. The chairman declared the debate closed with regard to the issues discussed in the oral proceedings and informed the parties that the proceedings would be continued in writing, see minutes, page 7, second and third last paragraphs.

XIII. In a letter dated 1 December 2015, the respondent referred to the fact that the debate as to the issue of priority was closed and requested that evidence which might be presented by the appellant not be admitted into the proceedings.

XIV. In a (second) communication accompanying the summons to attend (second) oral proceedings dated 2 February 2016 the board inter alia expressed its provisional opinion that the claimed priority was not valid and that the main reason for arriving at this opinion was that at the actual time of filing of the subsequent application Tenaris Connections AG had not been the owner of the priority application and/or the right to claim priority from it. In this context, the board stated in point 3.2.2, second paragraph: "With respect to the appellant's submissions regarding Italian law, the board does not consider it as proven that the legal ownership of either the priority application or the priority right was transferred with retrospective effect to Tenaris Connections AG". The board further indicated that it did not intend to refer questions of law to the Enlarged Board of Appeal and gave a preliminary opinion on the allowability of the third auxiliary request.

XV. By letter dated 14 March 2016, the appellant submitted that the priority right had been transferred prior to the filing of the subsequent application under Italian law on the basis of the enclosed evidence (D23 to D26), presented further additional arguments and filed a second legal opinion of Messrs Boscariol and Martucci (D27) and a second legal opinion of Mr Van Engelen (D28). The appellant requested that the following questions be referred to the Enlarged Board of Appeal:

"1. Must the transfer of right of priority be proven in a formal way and by applying the high standard of proof as required by Article 72 EPC or is it sufficient to apply the means within the meaning of art.117EPC?

2. In view of the decisions T517/14 and T205/14, where the Board decided that the applicable law in transferring a right of priority to a successor in title is exclusively the national law and where the national law allows retrospective transfer of rights, can such transfer be recognized under the EPC? If the answer is no, is it allowable to limit the effect of the applicability of the national law in case of retroactive effect of a contract, by means of a literal interpretation of the EPC and of the Paris Treaty and is retroactivity of a contract transferring the priority right against the principles of the EPC?

3. Is it necessary for the enjoyment of a priority right under article 87(1) EPC that the "succession in title" qualifies as a transfer of legal ownership of either the priority application or the priority right or may (i) a transfer or grant of an equitable interest, like economic ownership, or (ii) any other form of contractual consent from the applicant of the priority application be sufficient to meet the requirements of article 87(1) EPC?

4. Is it necessary for the enjoyment of a priority right as provided for in article 87(1) EPC that the "succession in title" must have taken place before or when the European application is filed, or is it sufficient that this succession takes place before or when the declaration of priority of article 88(1) EPC is filed in accordance with the Implementing Regulations (i.e., sixteen months from the earliest priority date claimed as provided for in Rule 52(2) EPC)? If the answer to this question is that it is not necessary that the succession has taken place before or when the European application is filed, is it then necessary that the succession has retroactive effect or not?

5. Are the concepts of "enjoyment" of a priority right and "successor in title" within the meaning of article 87(1) EPC autonomous concepts of European Patent Convention law or are these concepts to be interpreted by applying national law?

6. If the answer to the last question is that national law must or can be applied, which national law must or can in that case then be applied: (i) the law of the state of the priority application, (ii) the national law that applies to the legal relationship between the transferor and the transferee of the right of priority, (iii) the national law of the domicile of the transferor, (iv) the national law of the domicile of the transferee, (v) any other national law that may apply in conformity with general accepted principles of private international law, or (vi) any other national law?"

XVI. On 17 March 2016 Mr Haedicke filed second observations under Article 115 EPC regarding the retroactive transferability of a priority right (D29).

XVII. Second oral proceedings were held before the board on 14 April 2016.

During those oral proceedings the appellant's representative filed the following objection under Rule 106 EPC:

"Munich 14.4.2016 11h30

Appeal case T0577/11

The Patentee objects under Rule 106 EPC, because of the procedural defect made by the Board, as a fundamental violation of Art. 113 EPC occurred. In the 1**(st) oral proceedings the debate on validity of the priority rights under Italian law were not the object of a decision. By not reopening this part of the debate the Patentee has been deprived of its right to present all comments important for the decision to be taken by the Board.

For the Patentee

[Signature]"

At the end of the oral proceedings, the parties confirmed their requests as follows:

The appellant requested that

- the decision under appeal be set aside and that the patent be maintained in amended form on the basis of any of the sets of claims filed as the main request and the first to third auxiliary requests with the statement of grounds of appeal dated 25 May 2011,

- questions of law be referred to the Enlarged Board of Appeal,

- the appeal fee be refunded for substantial procedural violations committed by the opposition division,

- a different composition of the opposition division be ordered in case of remittal, and

- an apportionment of costs in favour of the appellant be ordered.

The respondent requested that the appeal be dismissed.

After deliberation, the chairman announced the board's decision.

XVIII. Claim 1 of the main request reads as follows:

"A threaded tube joint, comprising a male threaded tube member (1) and a female threaded tube member (2) with substantially cylindrical walls,

the male member (1) having a toroidal sealing surface (11) placed at its end portion near the threaded portion thereof engaging for sealing purpose, when the male and female members (1, 2) are in the assembled position,

a corresponding frusto-conical sealing surface (12) of the female threaded tube member (2) placed near a threaded portion

wherein the radius Rs of the toroidal sealing surface has a value comprised in the range 30 and 100 mm when OD is greater than 140 mm and is comprised in the range of 30 and 75 when OD is less than 140 mm

characterised in that

there is provided a thread with trapezoidal profile and with a clearance equal to or less than 0,15 mm between the stab flank (6) of the male member (1) and the corresponding stab flank (5) of the female member (2) in the assembled position and in that

a diametric interference (delta) between the toroidal sealing surface (11) and the frusto-conical sealing surface (12) is in the range from 0,2 mm to 1,0 mm."

Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the expression "and in that a contact length "b" between the toroidal sealing surface (11) and the frusto-conical sealing surface (12) is longer than 0,5 mm" has been added at the end of the claim.

Claim 1 of the second auxiliary request differs from claim 1 of the main request in that the expression "and in that the male member (1) has a front end frusto-conical abutment surface (9) forming an angle (gamma) comprised in a range between -15° and -5° with a plane orthogonal to a longitudinal axis (X) defined by the joint" has been added at the end of the claim.

Claim 1 of the third auxiliary request differs from claim 1 of the second auxiliary request in that the expression "in that a contact length "b" between the toroidal sealing surface (11) and the frusto-conical sealing surface (12) is longer than 0,5 mm" has been added before the expression "and in that the male member ...".

XIX. The arguments of the appellant, in writing and during the oral proceedings, may be summarised as follows:

Inventive step starting from document D2 - main request and first auxiliary request

Document D2 did not disclose the characterising features of claim 1 of the main request, namely that (a) the clearance between the stab flank of the male member and the corresponding stab flank of the female member had to be equal to or less than 0.15 mm in the assembled position, and (b) the diametric interference delta between the toroidal sealing surface and the frusto-conical sealing surface had to be in the range from 0.2 mm to 1.0 mm. The claimed range for the threading clearance ensured that under high compressive loads the threading contributed to absorbing part of the compression load. The gap between the thread stab flanks defined the moment in time when during loading of the joint the structural compressive load was shared by the threaded area, thus increasing compression resistance as from the point in time when the stab flanks started being in contact. Consequently, it was clear that the pin seal member and the box seal member would suffer a relative axial movement as the load was changing from tension to compression or vice versa. By means of the claimed range for delta, the radial interference in the seal region was always ensured, independently of the traction forces acting on the joints. As the metal seal contact was made on a frusto-conical surface, it was clear that there was a dependency between the relative axial position and the actual diametric interference deriving from the taper effect. These features were linked together in a synergic manner. They provided improved sealing for a wide range of operational loads, such as axial, compression and bending loads. However, the synergic effect had not been recognised by the opposition division, see Reasons, point 17.2.3, last paragraph.

Document D2 taught an arcuate profile at the end of the male member with a view to increasing the contact pressure, cf. column 2, lines 37 to 57, and column 1, lines 63, to column 2, line 7, and Figures 7 and 8. The skilled person would not turn to document D16, since that document taught a straight profile at the end of the male member (cf. Figures 4 and 5) and explicitly referred to the disadvantages of an arcuate profile, cf. paragraphs [0016] to [0018] and Figure 3. The skilled person would also not turn to document D9, since the male member shown in Figure 5 had no toroidal sealing surface placed at its end portion near the threaded portion for engaging a corresponding frusto-conical sealing surface of the female member. The skilled person, starting from the threaded joint according to document D2, would not consider any of documents D6 or D7 and documents D15 or D16 to look for a solution to a coherent problem such as the optimisation of the sealing capacity of a premium threaded joint, as they referred to other types of joint. The subject-matter of claim 1 of the main request was hence not obvious to the skilled person.

The further limiting feature of claim 1 of the first auxiliary request, namely (c) "a contact length "b" between the toroidal sealing surface (11) and the frusto-conical sealing surface (12) is longer than 0,5 mm", maximised the seal response. It was not independent of features (a) and (b) discussed above; all three characterising features of said claim formed a functional combination. The subject-matter of claim 1 of the first auxiliary request was hence not obvious to the skilled person.

Validity of the priority

As to the applicable law, (1) the laws of the Netherlands were involved because Agreement D19 indicated in section 5 that the contract should be governed by the laws of the Netherlands, (2) the laws of Italy were involved because the priority right originated from an application filed with the Italian Patent and Trademark Office and (3) the EPC was involved because the patent in suit was a European patent claiming priority from the earlier Italian patent application. The laws of Liechtenstein were not relevant.

The following five lines of argument established that Tenaris Connections AG was to be considered a "successor in title" of Tenaris Connections BV for the Italian priority application or the right to claim priority from it:

Transfer of ownership as of 9 September 2003 based on section 1 of Agreement D19, line (i)

The transfer of the priority application and the priority right which occurred on 9 September 2003, i.e. three days after filing of the subsequent application, was sufficient for the priority right to be validly claimed. This date was prior to the 16-month period available under the revised EPC for filing the declaration of priority. There was no requirement derivable from Article 87(1) EPC 1973 that the subsequent applicant had to be the successor in title when the subsequent application was filed. The 12-month period was relevant only for the filing of a subsequent application. There was no requirement that the subsequent applicant had to prove his entitlement to claim priority. A broad approach followed from the legal changes under EPC 2000 and was beneficial for the applicants of the priority and subsequent applications. Third parties were not adversely affected.

Transfer of ownership with retroactive effect as from 1 January 2003 based on section 4 of Agreement D19, line (ii)

As section 4 of Agreement D19 provided for a retroactive effect, the priority application and the right to claim its priority had been transferred from Tenaris Connections BV to Tenaris Connections AG as from 1 January 2003.

With respect to Italian law, all the rights mentioned in Agreement D19 were validly transferred with effect as from 1 January 2003 because on the basis of the principle of freedom of contract enshrined in Article 1322 of the Italian Civil Code it was permissible to provide for a retroactivity clause. In support, reference was made to legal opinion D21.

With respect to Dutch law, section 4 was to be interpreted in the sense that the parties agreed to transfer with retroactive effect the "economische eigendom" (economic ownership), but not the legal ownership. This was sufficient, however, as shown by decision J 19/87, the travaux préparatoires of the Washington Conference of 1911 for revising the Paris Convention and decisions T 205/14 and T 517/14.

Transfer agreement "by carrying out convincing behaviour" within a corporate group, namely the filing of the subsequent application, line (iii)

Under Italian law, no particular form was required for a contractual assignment of a patent application or a priority right and such a contract could be entered into "by carrying out convincing behaviours", i.e. via a mutual agreement "manifested by conclusive action". The ownership of the priority application and the priority right was legally acquired by Tenaris Connections AG under Italian law when it carried out a "convincing behaviour" showing that the application and the priority right belonged to it. In view of the fact that Tenaris Connections BV and Tenaris Connections AG were companies of the same corporate group Tenaris SA, the filing of the subsequent application in the name of Tenaris Connections AG constituted convincing behaviour showing that Tenaris Connections AG was the rightful owner of the priority application and the priority right derived from it. Thus, Tenaris Connections AG acquired ownership of the priority application and the priority right arising from it upon filing the subsequent application (appellant's letter of 3 July 2015, page 7, third paragraph, and legal opinion D21, page 6, third paragraph). Reference was made in this context to Italian case law on trade marks, in particular the theory of the group trade mark and free circulation inside a corporate group. Agreement D19 was concluded after the filing of the subsequent application only in order to produce written evidence of the previous assignment ("ad probationem").

Transfer of ownership by way of an oral agreement prior to the filing of the subsequent application, line (iv), and admission of the written declaration of the appellant's representative

Prior to the filing of the subsequent application, a transfer of the priority right had been orally agreed upon between Tenaris Connections BV and Tenaris Connections AG. The appellant's representative had received instructions from Tenaris Connections BV for the filing of the subsequent application in the name of Tenaris Connections AG (see his declaration filed during the first oral proceedings as proof of the existence of an oral agreement on the transfer of the priority application prior to the filing of the subsequent application). The priority right did not need to be mentioned as it was an accessory right to the application, which was automatically transferred with the application under Italian law (see page 5, fourth paragraph, and the paragraph bridging pages 6 and 7 of the minutes of the first oral proceedings). These submissions and said declaration should be admitted into the proceedings.

Transfer by an agreement "manifested by conclusive action" prior to the filing of the subsequent application, line (v), and admission of documents D23 to D29 into the proceedings

The written submissions of 14 March 2016 together with the appended documents D23 to D28, as well as document D29, which was filed by a third party but was declared to represent the appellant's own submissions, should be admitted into the proceedings.

Documents D23 to D27 had been filed in reaction to the non-admission of the declaration of the appellant's representative at the first oral proceedings. Any doubts of the board would now be overcome. Documents D23 to D26 had been retrieved from the internal files in the representative's Milan office a few days after the first oral proceedings before the board. The documents showed that there had been "conduct" between Tenaris Connections BV and Tenaris Connections AG which demonstrated that the priority right had been transferred according to Italian law before the filing of the subsequent application.

As the issue of transfer of ownership had existed since the beginning of the appeal proceedings, the respondent could be expected to deal with it and could not have been taken by surprise. These documents had also been filed in reaction to the board's statement in point 3.2.2, second paragraph, of its communication of 2 February 2016 (cf. point XIV above).

Document D27 supported the existence of an agreement between Tenaris Connections BV and Tenaris Connections AG "manifested by conclusive action" according to Italian law prior to the filing of the subsequent application. Mr Milesi, responsible for IP matters in both companies, sent instructions to the representative's firm that the subsequent application should be filed in the name of Tenaris Connections AG. In August 2003, Tenaris Connections AG was informed by the representative's firm of the filing of the subsequent application claiming priority from the earlier Italian application.

Documents D23 to D27 were therefore highly relevant, as they could be expected to change the outcome of the case, and should be admitted in line with decision T 1002/92. The new submissions did not represent a change to the appellant's case that the priority right had been transferred under Italian law before the filing of the subsequent application. Non-admission by the board would violate Article 1 of the First Protocol to the Convention for the Protection of Human Rights and Fundamental Freedoms (European Convention on Human Rights, "ECHR").

Legal opinion D28 was relevant in the event that the transfer of the priority right before the filing of the subsequent application was not accepted by the board, and like document D29 it contained arguments for matter which was in the proceedings.

Re-opening of the debate on the validity of the priority

In view of the above, the debate, although it had been closed with respect to the issue of validity of priority, had to be re-opened. The debate had only been closed due to the lateness of the day, the sole open question being whether a referral to the Enlarged Board of Appeal would be made. The facts had now changed, because the board itself had addressed this issue in point 3.2.2 of its second communication and because prima facie highly relevant evidence had been filed by the appellant which provided proof that the priority right had indeed been transferred in time. This required the debate on this point to be re-opened.

Not re-opening the debate constituted a fundamental violation of Article 113 EPC 1973, and an objection under Rule 106 EPC was raised accordingly (see point XVII above). In the first oral proceedings, the validity of the priority under Italian law had not been the subject of a decision. Not re-opening this part of the debate deprived the appellant of its right to present all comments important for the decision to be taken by the board.

Referral to the Enlarged Board of Appeal

Questions of law should be referred to the Enlarged Board of Appeal to ensure uniform application of the law. With respect to Agreement D19, the board's approach was inconsistent with decisions T 62/05 and T 1008/96. Further, the board's view of the interpretation of the term "successor in title" within the meaning of Article 87(1) EPC 1973 diverged from decisions J 19/87, T 205/14 and T 517/14. Moreover, the concepts needed to be primarily, if not exclusively, governed by convention law instead of national law. Furthermore, important points of law arose, also in view of Article 1 of the First Protocol to the ECHR and Article 17 of the Charter of Fundamental Rights of the European Union (2000/C 346/01).

Admission of the second and third auxiliary requests

The second and third auxiliary requests had been filed with the statement setting out the grounds of appeal in an attempt to overcome the objection of lack of inventive step raised in the opposition proceedings and should therefore be admitted into the appeal proceedings.

Novelty and inventive step - second and third auxiliary requests

Document D1 did not disclose a length for the clearance d1 between the stab flanks of the male and female members shown in Figure 14. The subject-matter of claim 1 of the second auxiliary request was therefore new for this reason alone. Figure 1 of document D1 described a threaded joint of the prior art, see page 10, line 5, to page 13, line 15. In this section (see in particular page 11, lines 8 and 9), reference was made to trapezoidal threads of the type known as "buttress" threads as defined in American Petroleum Institute (API) specification 5B, cf. document D9, page 9. The clearance mentioned therein did not pertain to embodiments of the invention according to document D1, since these were described on page 13, lines 17 et seqq., and shown for example in Figures 2 and 5. The respondent's argument that the clearance of API specification 5B was part of the disclosure of document D1 thus failed. Document D1 was silent about the diametric interference. Because the form of the lip sealing surface 5 was not a toroidal sealing surface as in the invention, the diametric interference could not be inferred from R1. This was a second difference with respect to document D1.

The subject-matter of claim 1 of the second auxiliary request also involved an inventive step with respect to document D1 for the same reasons as given above for the subject-matter of claim 1 of the first auxiliary request with respect to document D2.

Refund of the appeal fee

A refund of the appeal fee was requested in view of several substantial procedural violations committed by the opposition division. A refund was therefore to be considered equitable.

Apportionment of costs

An apportionment of costs incurred during the opposition proceedings in favour of the appellant was requested on account of an abuse of procedure by the respondent, because the validity of the priority had been contested at a very late stage of the opposition proceedings. This request had not been submitted at an earlier stage because the appellant had not been asked at the end of the oral proceedings before the opposition division whether it had any further requests and because the request had not been considered until after the oral proceedings.

XX. The arguments of the respondent, in writing and during the oral proceedings, may be summarised as follows:

Inventive step starting from document D2 - main request and first auxiliary request

Document D2 disclosed a threaded tube joint with all the features of the preamble of claim 1 of the main request. The male and female threads of said threaded tube joint had a trapezoidal profile. This document did not disclose a value or a range for the clearance between the stab flanks of the male and female members in the assembled position, nor a value or a range for the diametric interference. However, the skilled person knew that said clearance should be minimised with a view to minimising the axial relative movements of the male and female members (see also paragraphs [0028] to [0030] of the patent). The range for the clearance claimed in claim 1 of the main request, namely <= 0.15 mm, was well-known from the prior art (see e.g. document D6, page 8, lines 23 to 30, document D7, column 2, lines 35 to 40, and document D9, page 9). The skilled person further knew that the diametric interference depended on the diameter of the joint and that the mean contact pressure between the male and the female members increased with the diametric interference (see also paragraph [0017] of the patent). The diametric interference should be sufficient to provide an excellent seal (see column 1, line 61, of document D2). The range for the diametric interference delta claimed in claim 1 of the main request, namely 0.2 mm <= delta <= 1.0 mm, was also well-known from the prior art (see e.g. document D15, page 2, lines 35 to 36, and Table 2 as well as document D16, Tables 1 and 3). It followed that the subject-matter of claim 1 of the main request did not involve an inventive step.

According to claim 1 of the first auxiliary request the contact length between the surfaces of the male and female members had to be longer than 0.5 mm. The skilled person knew that the contact length was directly related to the design of the sealing surfaces and to the level of diametric interference (see also paragraph [0018] of the patent). Figure 3 of document D2 showed a large contact length ("seal 21") between the surfaces of the male and female members. Since the length of the radius R1 was between 50 and 300 mm (see column 4, line 30, and Figure 4), and taking the diametric interference known from Table 1 or 3 of document D16, the resulting contact length was inevitably longer than 0.5 mm. The subject-matter of claim 1 of the first auxiliary request therefore did not involve an inventive step.

Validity of the priority

The appellant did not take a clear position as to which law it considered to be applicable. "Law shopping" should not be admitted.

Transfer of ownership as of 9 September 2003 based on section 1 of Agreement D19, line (i)

When the subsequent application was filed, Tenaris Connections AG was not yet the successor in title of Tenaris Connections BV. As the priority right had not been transferred before expiry of the 12-month priority period, it no longer existed and therefore a subsequent transfer was not possible. The 16-month period for filing the declaration of priority or later points in time were not relevant. What was relevant was the filing of the subsequent application, even in situations where it was filed prior to expiry of the 12-month period.

Transfer of ownership with retroactive effect as from 1 January 2003 based on section 4 of Agreement D19, line (ii)

The acquisition of the "economische eigendom" on the basis of Agreement D19 was not sufficient to meet the requirement of "successor in title" within the meaning of Article 87(1) EPC 1973. Acquisition of the legal title was necessary. Decision J 19/87 could not be relied upon because property law in the UK was different and not applicable to the present case.

Transfer agreement "by carrying out convincing behaviour" within a corporate group, namely the filing of the subsequent application, line (iii)

Such a transfer upon filing was not proven. Agreement D19 did not refer to a transfer which had already taken place. The language rather suggested that a transfer of rights was agreed upon for the first time at the date of conclusion of Agreement D19, thus on 9 September 2003.

Transfer of ownership by way of an oral agreement prior to the filing of the subsequent application, line (iv), and admission of the written declaration of the appellant's representative

The appellant's submissions relating to a prior oral transfer made during the first oral proceedings should not be admitted because they were late. The filed evidence was not complete since the person giving the instructions was not identified. Moreover, the declaration of the appellant's representative constituted no proof that there had been a transfer by oral agreement or even a transfer of the priority right at all. The priority right was an independent right and thus to be distinguished from the priority application. It was not clear in relation to what subject-matter Tenaris Connections AG was "the new owner". Agreement D19 too provided no proof, as it did not make any reference to a transfer which had occurred earlier.

Transfer by an agreement "manifested by conclusive action" prior to the filing of the subsequent application, line (v), and admission of documents D23 to D29 into the proceedings

Documents D23 to D29 should not be admitted into the proceedings. They should have been filed together with the grounds of appeal. Their filing could also not be considered as a legitimate reaction to the first oral proceedings. Furthermore, they had been filed at a very late stage, only about one month before the second oral proceedings. In view of the newly filed evidence a number of uncertainties and further questions arose. In particular, it was not clear for which companies Mr Milesi worked and what powers he had. In documents D23 and D24 there was no reference to an oral contract or to a transfer that had already taken place. Due to the addition of "if possible" after Mr Milesi's statement in his email dated 23 May 2003 to Ms Rosetti "that all patents shall be filed directly in the name of Tenaris Connections [AG]" (cf. document D23), said statement could not be considered as an instruction. The submitted email exchange ended on 14 July 2003. The evidence D23 to D25 suggested that it was intended that transfers of rights should be made by means of a signed written contract, as also shown by the existence of Agreement D19. The content of the latter would be contradictory if the rights had already been transferred.

Re-opening of the debate on the validity of the priority

The appellant had not requested a re-opening of the debate in advance of the second oral proceedings. The debate on the validity of the priority had been closed, and it was a surprise that it was now to be re-opened. There was also no change in the case, and the appellant should have filed the documents prior to the first oral proceedings. Furthermore, it was consistent case law that two sets of oral proceedings were not held when the facts remained unchanged.

Referral to the Enlarged Board of Appeal

A referral should not be made. There was no need to refer questions to the Enlarged Board of Appeal.

Admission of the second and third auxiliary requests

The appellant's requests were not convergent in the sense that the second auxiliary request no longer contained the additional feature of claim 1 of the first auxiliary request. The second and third auxiliary requests contained the feature that the front end frusto-conical abutment surface of the male member formed an angle gamma comprised in a range between -15° and -5° with the longitudinal axis, cf. claim 3 as granted. This feature had not previously been claimed in any independent claim, was late-filed and was prima facie well-known in the art (see e.g. documents D6 to D8, D15 and D16). For these reasons the second and third auxiliary requests should not be admitted into the proceedings.

Novelty and inventive step - second and third auxiliary requests

Document D1 referred (see page 11, lines 8 to 13) to trapezoidal threads of the type known as "buttress" threads as defined in API specification 5B. This specification corresponded to document D9, which disclosed on page 9 a clearance of 0.025 to 0.18 mm. Document D1 also referred (see page 16, lines 24 to 27) to the threaded tube joint VAM TOP**(®) according to catalogue VAM**(®) No. 940 edited by Vallourec Oil & Gas in July 1994. This catalogue corresponded to document D8, which disclosed thread forms having a clearance in the claimed range. Document D1 disclosed a clearance d1 in Figure 14. Although document D1 did not explicitly disclose the value of d1 (cf. page 20, lines 22 to 24), it was clear from documents D9 and D8 that this document implicitly disclosed the first characterising feature of claim 1 of the second auxiliary request. The diametric interference could be inferred from the contact width mentioned in the passage on page 17, lines 14 to 20, of document D1 and from Figure 5 and claim 9 of document D1. Document D1 also disclosed the last characterising feature of claim 1 of the second auxiliary request, cf. Figure 5 showing that the appendix had a front end frusto-conical abutment surface having an angle of 15° with a plane orthogonal to the longitudinal axis. It followed that the subject-matter of claim 1 of the second auxiliary request was not new.

If the board were to consider the first and second characterising features of claim 1 of the second auxiliary request as distinguishing features vis-à-vis document D1 (as was the case for the same features of claim 1 of the main request vis-à-vis document D2), the arguments given above for the main request applied. The subject-matter of claim 1 of the second auxiliary request therefore did not involve an inventive step.

Claim 1 of the third auxiliary request differed from claim 1 of the second auxiliary request in that the contact length b had to be longer than 0.5 mm. Since this feature was known from document D1 (see page 17, lines 14 to 16), the subject-matter of claim 1 of the third auxiliary request also did not involve an inventive step.

Apportionment of costs

There had been no abuse of the procedure by the respondent. The issue of the validity of the priority was raised in view of claim requests containing technical features for which document D1 became relevant.

Reasons for the Decision
1. The appeal is admissible.

PROCEDURAL ISSUES

2. Admission of facts, evidence and arguments in relation to the validity of the claimed priority

2.1 According to Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. The discretion must be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

After filing its statement of grounds of appeal, the appellant presented various lines of argument in order to establish that Tenaris Connections AG was entitled to claim priority from the Italian priority application as the "successor in title" of Tenaris Connections BV (see point XIX above, Validity of the priority, lines of argument (i) to (v)).

Of these various lines of argument, line (ii) was the one presented before the opposition division and considered in the decision under appeal. Line (ii) was reiterated and new lines (i) and (iii) with documents D20 to D23a were presented in the appellant's response of 3 July 2015 to the communication of the board dated 12 May 2015. There was no reason for the board not to admit lines (i), (ii) and (iii) into the appeal proceedings. Nor was their admission a contentious issue between the parties.

Line (iv) was submitted for the first time during the first oral proceedings before the board, and line (v) was presented thereafter with letter dated 14 March 2016. Lines (iv) and (v) and the respective declaration and documents were an amendment to the appellant's case under Article 13 RPBA which was not admitted into the appeal proceeding for the reasons set out in the following sections.

2.2 Transfer of ownership by way of an oral agreement prior to the filing of the subsequent application, line (iv), and admission of the written declaration of the appellant's representative

During the first oral proceedings before the board the appellant alleged for the first time that the priority right had been transferred, together with the priority application, from Tenaris Connections BV to Tenaris Connections AG by way of an oral agreement prior to the filing of the subsequent application. In this context, the appellant's representative filed a written declaration as proof of this allegation (cf. point XII above).

This line of argument (iv) had not been presented at an earlier stage of the appeal proceedings. In the appellant's submissions of 3 July 2015 it was argued among other things that no formal requirements applied under Italian law for a transfer of the priority right and that a transfer was valid even if made orally. However, these were general legal explanations concerning formal requirements for a transfer of rights under Italian law. It is clear from the content of said letter (see page 7, third paragraph) that a transfer based on an "agreement by convincing behaviour by the filing of the subsequent application in the name of Tenaris Connections AG", i.e. an agreement implied by conduct, namely by the act of filing, was being alleged, and not a transfer based on an oral agreement which had occurred prior to the filing of the subsequent application. Hence, the appellant's submissions during the first oral proceedings amounted, after presentation of two additional lines of argument at the appeal stage (lines (i) and (iii)), to yet another amendment to its case within the meaning of Article 13(1) RPBA.

The appellant justified the lateness of its submissions regarding a prior oral agreement on the ground that, in proceedings before the opposition division, the respondent had also presented submissions very late by contesting the validity of the claimed priority only shortly before the oral proceedings, and this had been accepted by the opposition division. Moreover, the appellant had not expected that the claimed priority might be considered invalid by the board in spite of Agreement D19.

The board does not consider these arguments to be a convincing explanation of why these submissions could not have been presented at an earlier stage of the appeal proceedings.

The validity of the claimed priority was already an issue during the proceedings before the opposition division, and it was held in the decision under appeal that the priority was valid. Therefore it is understandable that the appellant did not address the validity of the claimed priority in its statement of grounds of appeal. However, the respondent, in its reply to the appeal, again disputed that Tenaris Connections AG was entitled to claim priority. The appellant therefore had sufficient reason to present all its arguments and evidence concerning the validity of the priority in its reaction to the respondent's reply or, at the latest, in its reaction to the first communication of the board. Thus the board agrees with the respondent that the appellant presented its new submissions at a very late stage of the appeal proceedings.

When exercising its discretion under Article 13 RPBA with regard to the new submissions, the board considered the stage of the proceedings, and also whether the appellant's new line of argument, based on new facts and evidence, and contested by the respondent, could be regarded as sufficiently straightforward to be dealt with by the board or the respondent without an adjournment of the oral proceedings.

According to the allegations (see minutes of the first oral proceedings, page 5, fourth paragraph, and page 7, first paragraph), the transfer by oral agreement concerned the priority application, and the priority right was automatically transferred with the application as an accessory right to the application. However, the substance of the written declaration of the appellant's representative filed as proof does not clearly indicate any agreement by oral consent. Also, it refers to Tenaris Connections AG as "the new owner" without further specification. The evidence filed in support of this allegation is not clear and does not allow the alleged facts to be established in a straightforward manner.

With respect to the identity of the "responsible person for IP matters" at Tenaris Connections BV and Tenaris Connections AG, which was questioned by the respondent, the appellant's representative declared at the first oral proceedings that he did not remember the person's name and that he would have to check the files in his firm in order to retrieve the relevant information. Therefore, as argued by the respondent, the declaration of the appellant's representative does not constitute proof that there has been a transfer by oral agreement or even a transfer of the priority right at all. Thus the new allegations concerning a transfer by oral agreement gave rise to additional questions which could not be clarified during the first oral proceedings, and would have required an adjournment of them. However, pursuant to Article 13(3) RPBA, the need to adjourn oral proceedings because of submissions made after the summons to oral proceedings is a strong reason for not admitting those submissions into the proceedings. In assessing the admission of new submissions, it is of relevance whether the new submissions would require an adjournment. That second oral proceedings may take place for other reasons is not a reason for admitting such late submissions.

In view of the above, the board, exercising its discretion, decided not to admit the representative's declaration, or the new allegations and the new line of argument concerning a transfer by oral agreement which were based on this declaration, into the appeal proceedings in accordance with Article 13(1), (3) RPBA.

2.3 Transfer by an agreement "manifested by conclusive action" prior to the filing of the subsequent application, line (v), and admission of documents D23 to D27 into the proceedings

After the first oral proceedings before the board, the appellant filed documents D23 to D27 and argued for the first time that the priority application and the priority right were transferred from Tenaris Connections BV to Tenaris Connections AG by an agreement "manifested by conclusive action" prior to the filing of the subsequent application.

In the appellant's view these further submissions did not amount to an amendment to its case since it had been arguing as of an earlier stage of the appeal proceedings that there had been a transfer of the priority right under Italian law prior to the filing of the subsequent application.

The board, however, does not share this view. The statement of grounds of appeal did not contain any facts, evidence or arguments with respect to the validity of the claimed priority.

With the new submissions the appellant argued that the priority application and the priority right derived from it had been transferred by an agreement "manifested by conclusive action" prior to 6 September 2003, i.e. prior to the filing date of the subsequent application (see page 4, third paragraph, of the letter dated 14 March 2016 and legal opinion D27, pages 2 to 4). Hence, these submissions are an amendment within the meaning of Article 13(1) RPBA. Moreover, compared to lines of argument (i) to (iv) hitherto presented by the appellant, these new submissions were a further amendment to its case.

The board also does not share the appellant's view that documents D23 to D27 should be accepted as an appropriate reaction to the non-admission of its representative's written declaration at the first oral proceedings.

Continuation of the appeal proceedings after the end of oral proceedings is not, as such, a reason for admitting new submissions or additional evidence relating to issues which were not admitted at the first oral proceedings or in respect of which the debate had indeed been closed. In the board's view, presenting a party's case little by little, depending on the further evolution of the case, is not in line with the principle of procedural economy. Moreover, the fact that documents D23 to D26 were retrieved from the internal files in the representative's Milan office a few days after the first oral proceedings before the board suggests that this evidence could also have been filed much earlier in the appeal proceedings.

As the appellant itself had correctly pointed out, the validity of the priority had been an issue as from the beginning of the appeal proceedings. This however cannot provide a valid basis for the appellant's argument that the respondent could not be surprised by new submissions on this issue at any point in time.

Nor can the content of point 3.2.2 of the board's communication of 2 February 2016, to which reference was made by the appellant, be accepted as a valid reason for these late submissions (see further details in point 3.2 below).

As to the issue of whether the content of documents D23 to D27 was highly relevant and was likely to change the outcome of the case, the board found that the submitted evidence did not allow clear conclusions to be drawn as to the transfer of the priority application or the priority right from Tenaris Connections BV to Tenaris Connections AG prior to the filing of the subsequent application. Instead, several uncertainties and further questions arose.

As pointed out by the respondent, it is not clear from the evidence which companies Mr Milesi worked for and what powers he had. The submitted correspondence between the appellant and its representative contains no indication that the priority application or the right to claim its priority had already been transferred. The respondent referred to the wording of Mr Milesi's email sent on 23 May 2003 to the firm of the appellant's representative: "all the patents shall be filed directly in the name of Tenaris Connections [AG], if possible". The board shares the respondent's view that, due to the addition "if possible", the statement is conditional and open to interpretation. It was Mr Milesi's answer to an email sent by the representative's firm about subsequent filings for inter alia the priority application, where it was also indicated that "once we receive your confirmation, we will provide you ... with documents and assignment of priority rights to be signed by the parties". Documents D24 (email of 24 June 2003) and D25 likewise refer to signed assignments. It is not possible to dismiss the respondent's view that it was intended that transfers of rights should be made by written contract, as also shown by the existence of Agreement D19, and that the assignment was simply not made in due time.

In view of the above, the board does not consider documents D23 to D27 to be highly relevant. Thus, also in the light of decision T 1002/92 cited by the appellant, these documents cannot be admitted at this late stage of the appeal proceedings.

Finally, without further addressing the question of the applicability of the provisions of the First Protocol to the ECHR, the board did not come to the conclusion that its Article 1, relating to the protection of property, was violated by the non-admission of the new submission. The board's decision is based on procedural rules, notably Article 13 RPBA, in particular taking into account the principle of fair proceedings for all parties, the interest of legal certainty and procedural efficiency.

In view of the above considerations, the board, exercising its discretion, therefore did not admit documents D23 to D27 and the new line of argument based on these documents into the appeal proceedings in accordance with Article 13(1), (3) RPBA.

3. Re-opening the debate on the validity of the priority

3.1 Re-opening the debate - general issues

As to the significance of the closing of the debate, the Enlarged Board of Appeal confirmed in its decision G 12/91 (OJ EPO 1994, 285) that, as far as oral proceedings are concerned, it marks the moment up to which parties may submit observations. It is fixed by the decision-making department - having first heard the parties' submissions - to allow itself time to consider its decision. Once the debate has been closed, further submissions by the parties must be disregarded unless the department allows the parties to present comments within a fixed time limit or decides to re-open oral proceedings for further substantive debate of the issues (cf. G 12/91, supra, Reasons, point 3). These considerations of principle equally apply to proceedings before the boards of appeal (cf. R 10/08, Reasons, point 8, and R 14/10, Reasons, point 6.1). In the aftermath of decision G 12/91 (supra), the principle that no submissions may be made by the parties after closure of the debate unless the board decides to re-open it is explicitly included in current Article 15(5) RPBA. Hence, the closing and also, as a rule, the re-opening of the debate are at the board's discretion.

However, a decision given orally by a board becomes effective and binding by virtue of being pronounced (see also G 12/91, supra, Reasons, point 2). It excludes any re-opening of the debate. Therefore, the boards are generally very careful about what they announce in the course of oral proceedings and whether they render an interlocutory decision on a particular point which would prevent them from reconsidering that point at a later stage, should the need arise. In addition to announcing a decision or re-opening the debate, for instance for follow-up questions on the issue previously discussed, the board may also announce conclusions of its deliberations or invite the parties to discuss the next topic.

As the closing of the debate as a rule takes place after the parties have been given the opportunity to present any facts, evidence or arguments they consider relevant, and as it initiates the deliberation phase for the deciding body concerning the topic in relation to which the debate has been closed, it also becomes clear that a re-opening of the debate constitutes an exception (cf. R 10/08, Reasons, point 8). Any re-entering into a substantive discussion at this stage, where after deliberation a conclusion or even a decision could be given by the board, would undoubtedly lead to delays.

In the board's view, this also means that there is no right of a party to have the debate re-opened. Hence a party's request for the debate to be re-opened is to be considered merely as a suggestion to the board to do so. Otherwise, due to a party's absolute right to oral proceedings, if a board, having closed the debate at the end of oral proceedings with the announcement that the decision would be issued in writing, then received a request for re-opening of the debate combined with a request for oral proceedings, the board might have to hold oral proceedings only on the issue of re-opening.

As to the circumstances in which a re-opening of the debate may occur, there may be situations which make it necessary, for example if the board establishes that a fundamental procedural deficiency constituting a ground for petition for review has occurred. Other reasons which may lead to a re-opening of the debate are situations where the board itself considers it expedient to obtain further comments from the parties in order to be able to reach its decision.

In the board's view, only in exceptional cases should the debate be re-opened due to late submissions by a party. Otherwise, the provisions governing the late filing of a party's submissions, in particular Article 13(1), (3) RPBA, risk being undermined or losing importance. These considerations also apply if second oral proceedings take place in order to hear the parties on issues in relation to which the debate has not been closed.

As to the extent to which the debate can or must be re-opened if the board decides to re-open it, the board takes the view that it does not have to re-open it for all issues, but can also do so only for specific points, depending on the circumstances (see point 3.3 below). This matches the exceptional character of the re-opening of the debate, as it allows further discussion to be limited to the extent necessary. Moreover, the board should not be deterred from re-opening the debate by the consideration that, if it did so, it might be faced with a repetition of the entire earlier debate.

3.2 In the present case, the chairman had closed the debate at the end of the first oral proceedings with regard to the issues discussed in those oral proceedings (cf. page 7 of the minutes, sixth paragraph), which included the validity of the claimed priority.

During the second oral proceedings the appellant requested re-opening of the debate on the validity of the priority, in particular concerning its lines of argument (iv) and (v), whereas the respondent categorically objected to any re-opening.

The board does not share the appellant's opinion that, in view of the content of point 3.2.2 of its communication dated 2 February 2016, the board had itself already re-opened the debate on the issue of the validity of the priority under Italian law.

In this communication the board conveyed inter alia its conclusions on the issue of priority (cf. points 3.1 and 3.2) and informed the parties of its intention not to make a referral to the Enlarged Board in that respect (cf. point 3.3).

Point 3.2.2 of said communication cannot be understood as indicating that the board had re-opened the debate on the issue of priority. It also did not raise new aspects which had not been discussed in the appeal proceedings. As the context and the heading of point 3.2 of the communication clearly show, said point concerns the alleged retrospective transfer based on Agreement D19. With respect to the appellant's submissions regarding Italian law it contains inter alia the board's opinion that it did not consider it proven that the legal ownership of either the priority application or the priority right had been transferred with retrospective effect to Tenaris Connections AG. The appellant might have taken this as an opportunity to file further submissions. The fact that the board, after the debate on the validity of claimed priority had been closed, informed the parties of its opinion on this issue cannot however be considered a re-opening of the debate on this issue.

Also, the board does not share the appellant's view that the debate on the priority issue had been closed only due to the lateness of the day. The parties were able to present all the comments that they then had on the issue of priority before further topics were addressed following the issue of priority (see minutes of the first oral proceedings, pages 5 to 7).

The appellant based its request to re-open the debate on the further argument that it had filed prima facie highly relevant evidence which provided proof that the priority right had been transferred in due time. Apart from not sharing this view (cf. point 2.3 above), the predominant issue for the board in its consideration not to re-open the debate on the issue of priority as a whole was that no violation of a party's right to be heard was apparent to it.

3.3 Re-opening the debate only for a specific point, and admission of documents D28 and D29 into the proceedings

During the second oral proceedings, however, the board decided to re-open the debate with regard to a specific point, namely the statement in point 3.2.2, third paragraph, of its communication of 2 February 2016, reading: "A transfer of economic ownership with retrospective effect according to Dutch law, which does not entail a transfer of the legal title, is not sufficient to meet the requirements of Article 87(1) EPC 1973".

The first oral proceedings had ended following a discussion inter alia of the validity of the claimed priority, during which the board had also addressed the question of a referral to the Enlarged Board of Appeal. In its communication of 2 February 2016 the board indicated its intention not to refer questions of law to the Enlarged Board. One of the issues involved in the context of a potential referral was the aspect of the retroactive effect addressed in section 4 of Agreement D19 under Dutch law.

The board therefore considered it appropriate to hear the parties specifically on the above-mentioned statement. It admitted documents D28 and D29 into the proceedings since it considered them relevant to this point. Legal opinion D28 contained additional legal explanations on the subject of "economic ownership" under Dutch law, in particular in the context of decision J 19/87, and included arguments favouring a referral to the Enlarged Board. D29 contained further legal explanations of the retroactive transferability of the priority right. In re-opening the debate on the above point and admitting these two related documents, the board did not consider this to be unfair to the respondent. Parties must take into account that a board can decide to re-open a closed debate as long as no decision has been taken. The respondent, objecting to a re-opening of the debate and the admission of the documents in general, did not argue that it was unable to address the point. As to the respondent's point that two sets of oral proceedings are not held in case of unchanged facts, the board notes that this concerns the limits of the right of a party to oral proceedings pursuant to Article 116 EPC 1973. It does not prevent the board from addressing issues at oral proceedings after a re-opening of the debate.

4. Objection under Rule 106 EPC

4.1 During the second oral proceedings the appellant filed a written objection under Rule 106 EPC in which it made explicit reference to a fundamental violation of Article 113 EPC 1973.

4.2 The board does not share the appellant's view that not re-opening the debate on the validity of the priority in full had deprived it of its right to present all comments important for the decision to be taken by the board.

The validity of the claimed priority had been an issue from the beginning of these appeal proceedings in view of the respondent's reply to the appeal. The first communication of the board dated 12 May 2015 indicated the board's preliminary opinion that the claimed priority was not valid. The appellant thus had ample opportunity to present all facts, evidence and arguments which it considered relevant for the prosecution of its case.

It is true that during the first oral proceedings the board did not take an interlocutory decision concerning the validity of the claimed priority. However, it did take a procedural decision to declare the debate closed on this issue in accordance with Article 15(5), first sentence, RPBA. It is clear from the wording of Article 15(5), second sentence, RPBA that the closure of the debate is not binding on the board, but that the board can decide to re-open the debate. The board, however, is of the view that a party has no right to a re-opening of the debate, but that it lies within the discretion of the board to re-open the debate or not and, if it does so, on which specific issue(s) the debate is re-opened (see point 3.1 above).

The issues of whether the appellant's written submissions of 16 March 2016 and documents D23 to D29 should be admitted into the proceedings and whether the debate on the validity of the claimed priority should be re-opened were extensively discussed at the second oral proceedings, and the parties had the opportunity to present their arguments in that respect.

4.3 Therefore, the objection under Rule 106 EPC was dismissed.

5. Oral submissions by Mr Van Engelen at the second oral proceedings

5.1 At the second oral proceedings, the appellant requested that its expert on legal matters, Mr Van Engelen, a Dutch professor of law, be allowed to make oral submissions. The respondent objected to this request as Mr Van Engelen was not a professional representative, and the appellant's intention that he should speak had not been announced in advance of the oral proceedings. Hence the request was to be refused, cf. decision G 4/95 (OJ EPO 1996, 412).

5.2 The criteria set out in G 4/95 relate to the content and timing of the request of a party that its accompanying person be permitted to make oral submissions. These criteria governing the board's discretion are, in particular, aimed at ensuring that no oral submissions are presented by or on behalf of a party which take the opposing party by surprise and for which that party is not prepared. Accordingly, especially where such requests are made shortly before or at the oral proceedings, they should be refused unless there are exceptional circumstances or the opposing party agrees (see G 4/95, supra, Headnote II and Reasons, point 10).

5.3 Mr Van Engelen had already made oral submissions on behalf of the appellant at the first oral proceedings, which was not a contentious issue at the time.

Because of his earlier presence and oral submissions, it was foreseeable for the respondent and the board that, when the board summoned to second oral proceedings, Mr Van Engelen would also attend those proceedings and would make further oral submissions on behalf of the appellant. This was all the more so because the appellant, together with its submissions, had filed a second legal opinion by Mr Van Engelen (D28) in advance of the second oral proceedings. Accordingly, the respondent was able to properly prepare itself in relation to further oral submissions by Mr Van Engelen.

5.4 In view of the particular circumstances of the present case, the board allowed Mr Van Engelen to make oral submissions on the legal issues as an "accompanying person" of the appellant's representative.

PRIORITY

6. Validity of the claimed priority

6.1 The issue of entitlement to the priority right

The sole issue contested with respect to the validity of the claimed priority was whether, as argued by the appellant, Tenaris Connections AG was entitled to claim priority from the earlier Italian application filed on behalf of Tenaris Connections BV. Tenaris Connections AG was one of the several applicants for the international application and was indicated inter alia for the designation of EP (cf. Rule 4.5(d) PCT), the latter making it unnecessary to assess the relevance of designations in this context.

In its communication of 12 May 2015, the board, applying the general principle that a party claiming a right must be able to show that it is entitled to that right and referring to decisions T 1008/96, Reasons, point 3.3, T 1056/01, Reasons, point 2.10, and J 19/87, expressed its view that, in the present circumstances where the validity of the claimed priority was at stake, it was the appellant-patentee who had to demonstrate that the priority was validly claimed. This was not contested by the appellant, and in the meantime further case law has been issued in which this approach is also applied (cf. decisions T 205/14 of 18 June 2015, Reasons, point 3.5, and T 517/14 of 19 June 2015, Reasons, point 2.6).

6.2 Applicable provisions of the PCT and EPC

Both the appellant and the respondent referred to the provisions of the EPC as the basis for assessing whether the subsequent application validly claimed priority from the earlier application filed by Tenaris Connections BV, and in particular for the question whether Tenaris Connections AG, one of the applicants for the subsequent application and the only applicant for all designated EPC contracting states, could be considered the successor in title as regards the priority application or the right to claim priority from it. The board agrees that the EPC provisions are applicable for the assessment of this question.

The subsequent application is an international application filed under the PCT on 6 September 2003 for which the EPO acted as designated Office. Such an international application is deemed to be a European patent application ("Euro-PCT application") as of its international filing date (cf. Article 150(3) EPC 1973 and Article 11(3) PCT). That Articles 150-158 EPC 1973 are applicable in the present case follows from the facts that the decision to grant the patent in suit took effect before the entry into force of EPC 2000 and that the transitional provisions do not provide for applicability of these provisions in their revised form to patents already granted (see Article 7 of the Act revising the EPC of 29 November 2000 and Article 1 No. 6 of the Decision of the Administrative Council of 28 June 2001, OJ EPO 2003, Special Edition No. 1, 201 et seq.). As Articles 150-158 EPC 1973, which constitute the part of the EPC which, pursuant to Article 150(1) EPC 1973, governs international applications, do not comprise provisions relevant for determining the validity of a claimed priority, the general provisions of the EPC apply with the proviso that, in case of conflict, the PCT provisions will prevail (cf. Article 150(2) EPC 1973).

In various respects, the PCT explicitly accords primacy to "national law", which for the present purposes is the EPC for European regional applications or patents (cf. Article 2(x) PCT). Article 27(5) PCT provides that any contracting state to the PCT is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.

The validity of a claimed priority is relevant for defining the effective date of a claimed invention and for determining the relevant state of the art. As the validity of the claimed priority thus has a direct effect on the patentability of the claimed invention, the provisions of the EPC, in particular Article 87(1) EPC 1973 (and not Article 8 PCT or Article 4 Paris Convention), may be applied pursuant to Article 27(5) PCT for the question at issue in the present case, namely whether the applicant was entitled to claim priority from the earlier application.

According to the transitional provisions (Article 7 of the Act revising the EPC and Article 1 No. 1 of the Decision of the Administrative Council, supra), Article 87(1) EPC 1973 applies to the present patent.

In this context the board notes that the English version of this provision refers to "successors in title" in the plural form. The parties and the board have read the provision in the singular. The fact that the German and French versions of the EPC provision and Article 4A(1) Paris Convention, on which the provision was modelled, all use the singular form, and also the fact that the inconsistency between the languages was removed in the revised EPC without any indication that this constituted a change in substance (see OJ EPO 2007, Special Edition No. 4, Article 87), leave the board in no doubt that the English version of Article 87(1) EPC 1973 should also be read as "successor in title".

6.3 Applicable law for assessing succession in title within the meaning of Article 87(1) EPC 1973

In the present case, the board did not need to decide which law is applicable for assessing the validity of the transfer of the priority application or the priority right or whether, or under what conditions, the priority application and the priority right are transferable under the relevant law. None of the appellant's lines of argument, which were based on the applicability of Italian and Dutch law, have led to a finding that the requirements of Article 87(1) EPC 1973 were fulfilled. No other national laws were invoked by the parties. Therefore to reach a decision in the present case it was not essential to determine the applicable law.

6.4 The appellant's lines of argument

In view of the board's decisions not to admit lines of argument (iv) and (v) and the respective declaration and documents (see points 2.2 and 2.3 above), the lines of argument to be considered as to their merits were a transfer based on Agreement D19 (lines (i) and (ii)) and a transfer by an agreement "by carrying out convincing behaviour within a corporate group", namely by filing the subsequent application on 6 September 2003 (line (iii)).

Even though it appears that, logically, lines (i),(ii) and (iii) are mutually exclusive, the board has assessed each line independently and, in doing so, has accepted a change in the appellant's argument as regards the nature of Agreement D19, i.e. whether it was constitutive of the transfer or of a declaratory nature only.

6.5 Transfer of ownership on 9 September 2003 based on section 1 of Agreement D19 (line (i))

6.5.1 It was not contested between the parties that, on the basis of Agreement D19, Tenaris Connections AG was the "successor in title" of Tenaris Connections BV for the Italian priority application and the right to claim priority from it as of 9 September 2003. This date, however, is three days after the filing date of the subsequent application.


The appellant argued that, for a priority claim to be valid, Article 87(1) EPC 1973 required only that there was a valid first application, and that the subsequent application was filed within 12 months after the first filing in respect of the same invention, which subsequent application could be filed by the applicant's successor in title. No time restriction could be derived from the provision concerning the time by when the succession in title had to have taken place.

The board, however, notes that a time constraint as to the question of succession in title is imposed by Article 87(1) EPC 1973.

6.5.2 Wording of Article 87(1) EPC 1973

Article 87(1) EPC 1973 reads: "Any person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent ..., or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."

The provision uses the wording "has ... filed" and "shall enjoy, for the purpose of filing a European patent application" (see also the German version "eingereicht hat"/"genießt für die Anmeldung ... zum europäischen Patent" and the French version "a ... déposé"/"jouit, pour effectuer le depôt d'une demande de brevet européen"). The provision therefore relates to a period of time lying between the acts of filing the priority application and filing the subsequent application. The term "successor in title" refers in the context of the provision to the person who has duly filed the priority application but not yet the subsequent application ("[a]ny person who has duly filed ..., or his successor[...] in title"). Hence, for a right of priority to be enjoyed from a first application, the subsequent application must be filed by the applicant of the priority application or his successor in title. The latter alternative presupposes that the succession in title has already taken place when the subsequent application is filed. Thus, whilst the circumstances of a succession in title, whether originating from a contract or occurring by operation of law, remain undefined, the requirement that the succession in title must have occurred when the subsequent application is filed is clearly derivable from the wording of Article 87(1) EPC 1973.

The appellant's interpretation that Article 87(1) EPC 1973 does not impose such a requirement and thus is not concerned with the point in time of a succession in title can, in the board's view, not be reconciled with the wording of the provision.

6.5.3 Interpretation of Article 87(1) EPC 1973 in line with the provisions of the Paris Convention in view of the legislative history

As stated by the Enlarged Board of Appeal, "Articles 87 to 89 EPC provide a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application. The Paris Convention also contains rules of law concerning priority. The Paris Convention is not formally binding upon the EPO. However, since the EPC - according to its Preamble - constitutes a special agreement within the meaning of Article 19 of the Paris Convention, the EPC is clearly intended not to contravene the basic principles concerning priority laid down in the Paris Convention" (cf. G 3/93, OJ EPO 1995, 18, Opinion, point 4).

The board considers that its interpretation of Article 87(1) EPC 1973 is in line with Article 4 Paris Convention and the legislative history of these provisions.

Article 87(1) EPC 1973 was modelled on Article 4A(1) and Article 4C Paris Convention (see also Document IV/6514/61, report on the meeting of 6 October 1961 of the Patents Working Party; Report on the First Preliminary Draft Convention, 1970, Part IV, point 7; Document MR/27 of 18 April 1973, Comments by WIPO, point II.1). Hence, it is no surprise that Article 4A(1) Paris Convention uses similar wording ("who has duly filed"/"for the purpose of filing") and thus also refers to the scenario in which a first application has been filed but not yet the subsequent application.

From the legislative history of the Paris Convention it can be derived that the right of priority was already incorporated in the original text of the Paris Convention of 1883 (see Bodenhausen, Guide to the Paris Convention, BIRPI 1969, page 35).

The creation of the right of priority was aimed at protecting the rights of the applicant of a first application for an invention in all countries of the Paris Union by securing the filing date as the effective date for the definition of the state of the art. This was to enable the applicant to decide, within a certain period, in which other countries protection should be sought in respect of the same invention and to prepare for such subsequent filings which, in the absence of a centralised filing system, were still required at that time. In the event of such subsequent filings, other applications or disclosures occurring in the priority period were to have no negative effect as regards the patentability of the invention (see Article 4B Paris Convention).

At the Washington Revision Conference in 1911, the wording "successor in title" was added to Article 4A(1) Paris Convention (Actes de la Conférence de Washington de 1911, UIPPI, Berne 1911, "Actes de Washington", pages 44, 247, 275 and 307), but the historical documentation does not indicate a specific point in time as to when the succession in title must have taken place, nor does it give much information about the purpose of the amendment (see, however, the points addressed by the appellant mentioned in point 6.5.2(b) below).

It is, however, reported that, while the "successor in title" was not mentioned in Article 4A Paris Convention, courts in some countries allowed successors in title to claim priority, whereas others did not. The addition of the term "successor in title" to the Paris Convention clarified the situation in order to meet an urgent need in practice (see Wieczorek, Die Unionspriorität im Patentrecht, 1975, page 129).

It must be borne in mind that applications in foreign countries involve additional costs which the applicant cannot always afford and which might prevent him from further exploiting his invention abroad. The amendment of 1911 confirmed that the applicant's successor in title could also enjoy the priority right, and that therefore it was not necessary for the applicant of the priority application to make the subsequent filings himself in order for them to benefit from the priority of the earlier application.

The board sees no indication in the travaux préparatoires that this amendment was intended to change or substantially broaden the concept of priority as designed by the Paris Convention and having existed at that time for almost thirty years.

The legislative development of the provision suggests that the underlying intention was to extend the options of the applicant of the first filing by allowing him, in addition to the existing alternative of filing the subsequent application himself, to transfer his rights to another person who would then enjoy the priority right as the applicant's successor in title. However, because the applicant wishing to make his own subsequent filing must do so within the priority period, a transfer of ownership is also subject to the same time constraints, such that the successor in title may file the subsequent application within the same period.

There is no indication that, during the Washington Revision Conference, the intention in adding the term "successor in title" was to give an applicant claiming priority from an earlier application who is not entitled to the right of priority when he is filing his application an opportunity to acquire at a subsequent stage the priority right existing from an earlier application in respect of the same invention filed by another person and attribute it to his own application.

The appellant, in support of its position that there was no indication that the succession in title had to have already been completed at the time of filing the subsequent application, referred to the fact that, at the Washington Conference, there was even a proposal by the French delegation to introduce an amendment to the effect that the entitlement of the successor in title would have had to be proven only at the time of grant of a patent (cf. Actes de Washington, supra, pages 95 and 191).

However, this proposal concerning proof of entitlement to the right of priority was not taken up into the Paris Convention. The board also notes that the relevant passage relates to the time for furnishing proof of a succession in title that has taken place. No conclusions can be drawn from this statement as to when such succession must occur. In particular, it cannot be concluded that it should be permissible to transfer the priority application or the priority right arising from it until the time at which proof of a succession in title must be furnished.

In view of the above, the board considers that its interpretation of Article 87(1) EPC 1973 is in line with the basic principles governing the right of priority laid down in the Paris Convention.

6.5.4 Relevant case law

Likewise, in the case law of the boards of appeal and the jurisprudence of national courts of the EPC contracting states hitherto, the point in time at which the subsequent application was filed has been considered relevant in assessing whether the applicant of the subsequent application is entitled to the claimed priority pursuant to Article 87(1) EPC 1973 as a successor in title (see decisions T 62/05, Reasons, point 3.4; T 788/05, Reasons, point 2; T 493/06, Reasons, point 11; T 382/07, Reasons, point 9.1; German Imperial Patent Office, BlPMZ 1906, 127; German Federal Court of Justice, decision of 16 April 2013, X ZR 49/12 - Fahrzeugscheibe, Reasons, point II.2.a); High Court of Justice of England and Wales, Edwards Lifesciences AG v Cook Biotech Incorporated, [2009] EWHC 1304 (Pat), para 95 with reference to decisions J 19/87 and T 62/05; KCI Licensing Inc. et al. v Smith & Nephew PLC et al., [2010] EWHC 1487 (Pat), para 58; HTC Corporation v Gemalto S.A., [2013] EWHC 1876 (Pat), para 132; Idenix Pharmaceuticals Inc. v Gilead Sciences Inc. et al., [2014] EWHC 3916 (Pat), para 409; Higher Regional Court Düsseldorf, decision of 6 December 2012, I-2 U 46/12, Reasons, point II.B.3(b)(aa) 1.2.1).

It is less clear from the above-mentioned case law whether, considering that the smallest time unit under the EPC is a day, the latest day on which succession in title has to have occurred is the day before the filing of the subsequent application or whether that date is still included. This specific question, however, was not relevant in the present case.

As to other approaches, the board is aware of decisions in which the German Federal Patent Court considered that it was the moment of filing the declaration of priority with the particulars relating to the priority application which was relevant for the assessment of entitlement to priority rights (German Federal Patent Court, decision of 15 February 2012, 5 Ni 59/10 (EP), Reasons, point I.2, and decision of 28 October 2010, 11 W (pat) 14/09, Reasons, point II.B.2(a)(cc)).

In the present case, the subsequent application was filed on 6 September 2003 and, at the same time, the declaration of priority was submitted in accordance with Article 8(1) PCT and Rule 4.10(a) PCT (as in force until 31 March 2007). According to appellant's line of argument (i), Tenaris Connections AG was the successor in title as of 9 September 2003, i.e. three days later. Hence, Tenaris Connections AG was not entitled to the claimed priority pursuant to Article 87(1) EPC 1973 according to any of the established approaches in the case law.

6.5.5 Decisions cited by the appellant

The appellant, however, referred to Agreement D19 and argued that in decisions T 62/05 and T 1008/96 the deciding boards had also taken into consideration declarations which were signed after the filing of the respective subsequent application. In both cases, the boards did not refuse the declarations because of the date of the signature, but for other reasons (contradictory evidence on file or vague content of the declaration). A contrario, Agreement D19, to which such other reasons did not apply, provided a valid basis for a succession in title under Article 87(1) EPC 1973.

The board does not share the appellant's approach that, because a board decided that one of two conditions was not met, it could be concluded that the board considered the other condition to be fulfilled. The present case is also not comparable because Agreement D19 differs from the declarations on file in the two cited cases referred to by the appellant: in case T 62/05, it was a declaration of the "Representative Director & President" of the applicant of the priority application, who was reporting on events that had occurred prior to the subsequent filing; in case T 1008/96 it was a declaration of the applicant of the priority application in which she confirmed before a notary public that she had assigned the priority applications in a specific year which preceded the filing of the subsequent application.

Hence, these two decisions do not support the appellant's case. Nor can they held to contradict the board's finding that, if the applicant of the subsequent application is not the applicant of the priority application, he must be the successor in title when the subsequent application is filed.

6.5.6 Proof of entitlement to the priority right

The appellant, in support of its view that Article 87(1) EPC 1973 did not set a time constraint in respect of the succession in title, referred to the circumstance that an applicant who claims the priority of an earlier application is not always obliged to provide proof of his entitlement to the priority right if he did not file the priority application. The absence of the need to file such proof as a matter of course corresponded to the absence of the need to be a successor in title upon filing the subsequent application.

On this point the board notes that the absence of a need to file proof of entitlement cannot automatically lead to the conclusion that, as suggested by the appellant, the applicant need not be entitled to the right at a particular point in time. Rather, the absence of a requirement in the EPC for the applicant to submit proof of his entitlement to the claimed priority as a matter of course corresponds to the absence of an obligation for the EPO to assess the validity of the claimed priority in every case in which priority is claimed.

In the preparatory work for the EPC, there was in fact a discussion in the Patents Working Group in 1963, in the context of how and when the priority right was to be claimed (Article 74 of the preliminary draft 1962, later Article 88 EPC 1973), about whether also to include a provision in the implementing regulations on proof of transfer of the priority right from the applicant of the first application to the subsequent applicant.

On the one hand, it was argued that it would be useful if the EPO would establish in a case of succession in title that an agreement did indeed exist between the two parties, because it too often happened that the applicant of the subsequent application claimed priority from an earlier application without being entitled to do so. Moreover, the claiming of a priority right was published in the European Patent Register.

On the other hand, it was argued that, in view of the many cases in which a claimed priority would not become relevant for the grant of a patent, the EPO should not be obliged to assess the validity of a transfer of priority in each and every case. It was sufficient that the EPO could ask for proof of succession in title if and when the question became relevant in a particular case. Publication in the Register would signify only that a priority right was claimed, but without providing any guarantee given by the Office as to the validity of the priority (cf. document 7669/IV/63 of 6 November 1963, meeting of the Patents Working Group from 1 to 12 July 1963, Article 74).

Whereas the Patents Working Group seems to have been in favour of including a provision concerning entitlement to the priority right (cf. document 7669/IV/63, Article 74 continued), this approach was abandoned at a later stage in the preparatory discussions, partly due to considerations relating to the PCT (see document BR/51/70 of 7 October 1970, point 36). The proposal to require the applicant, at least, to make a statement as to entitlement to the priority right, which was considered in conformity with the PCT, did not receive sufficient support at that time.

As a result, applicants who are not applicants of the priority application and claim priority from it have to submit proof of entitlement only if the EPO invites them to do so. The requirement that the applicant of the subsequent application must be entitled to claim priority when filing his application is a separate issue.

6.5.7 Considerations as to the inventor's position

As further support for the argument that no time restriction for the succession in title concerning the priority application or the priority right arising from it is imposed by the EPC, the appellant referred to the discussions in the travaux préparatoires of the Diplomatic Conference in 1973 concerning the inventor's position (see document M/PR/G, report of the Main Committee I, point C.3.; document M/48/I, Memorandum B). The appellant argued that, as regards the transfer of the inventor's rights, it was not intended for legal certainty for third parties to be established during the examination procedure, and that the legislator's decision not to require proof of transfer of the inventor's rights emphasised that those rights, including the priority right, should be transferred in as free and unimpeded a manner as possible.

The board considers that the absence of a requirement for the applicant to file proof of his entitlement to the invention again corresponds to the absence of a requirement that this fact is to be verified by the EPO as a matter of course. No further-reaching conclusions may be drawn. Moreover, the board recalls that the issue at stake in the present case is not the inventor's right to the European patent, governed by Article 60 EPC 1973 and Article 61 EPC, but the right of the applicant of a European (or Euro-PCT) application to claim priority from an earlier application pursuant to Article 87(1) EPC 1973. The right of priority arises for the person who filed the first application ("any person who has duly filed..."), irrespective of his entitlement to the invention. For this reason, too, it is hardly convincing to make the leap from the absence of a requirement for the applicant to file proof of his entitlement to the invention to a free and unimpeded transferability of the right of priority.

6.5.8 Filing of the declaration of priority, Article 88 and Rule 52(2) EPC

The appellant further argued that, because Article 88 and Rule 52(2) EPC allowed the declaration of priority to be filed after the filing of the subsequent application, until expiry of 16 months from the earliest priority claimed, the priority right must have been available, and therefore also transferable, at least until expiry of this time limit. Since the applicant of a priority application who filed a subsequent application within the priority period did not have to decide whether to claim priority when filing the subsequent application, there was no reason why he should be required to own the priority right at that date. Therefore, the transfer of ownership from Tenaris Connections BV to Tenaris Connections AG on 9 September 2003 occurred in due time.

The board notes that the provisions of Article 88 and Rule 52 EPC are not applicable in the present case. The application that led to the patent in suit was an international application. Pursuant to Rule 4.10(a) PCT (as in force until 31 March 2007) the declaration of priority was, as a rule, to be made on filing the subsequent application (similarly under Article 88(1) and Rule 38(1), (2) EPC 1973).

Moreover, the filing of the declaration of priority, i.e. the indication of the date on which and the state in or for which the previous application was made and the file number, is a purely formal requirement that the applicant of the subsequent application has to fulfil if he wants to invoke the priority right for prosecution of the subsequent application. It ensures that the patent office which receives the subsequent application is duly informed of the fact that priority is claimed because of its importance for the prosecution of the application, in particular for search and examination. The particulars in the declaration of priority are published with the application (see Article 4D(2) Paris Convention, Rule 38(6) EPC 1973, Rule 52(5) EPC), for the purpose of informing the public of the claimed priority, without however providing any guarantee as to the validity of the claimed priority (see also point 6.4.6).

The Paris Convention of 1883 did not contain any rules on when and how the right of priority may be claimed (see Bodenhausen, supra, page 47), and the rule introduced at the Washington Revision Conference in 1911 leaves it to the choice of the national legislators to determine the latest date on which such a declaration must be made, without providing for harmonisation (cf. Article 4D(1) Paris Convention); and this demonstrates the formal nature of the declaration of priority, in addition to the fact that Article 4D(4) Paris Convention itself names it a "formality". The EPC legislator likewise considered the filing of the declaration of priority to be of procedural relevance only (see e.g. document BR/135/71 of 17 November 1971, point 112).

The question of the point in time by which the declaration of priority can or must be filed is, therefore, to be distinguished from the question of the point in time at which the subsequent applicant who is not the applicant of the priority application must be entitled to claim priority, the latter a question that also involves issues of substantive law. Answering the first question does not permit conclusions to be drawn therefrom as regards entitlement to the right.

6.5.9 Need for a broad interpretation and no adverse effect for third parties

The appellant further argued that the applicant of the priority application should be allowed more flexibility to make use of his priority right to the greatest extent possible. This means that he should thus be able to assign his right to an applicant of a subsequent application that has already been filed. At the same time, an applicant of a subsequent application who was not the applicant of the priority application should be given the possibility to become entitled to the priority right after filing his application.

In the appellant's view, a more liberal approach was also needed because transactions between companies could be complex and might take time, in particular because of difficulties of communication between the companies. Documentation of events with a legal impact was, in many cases, not precise or was even contradictory.

Nor would a broad approach have a detrimental effect on the legitimate expectations of third parties. Before the application was published, third parties had no knowledge of its existence. Provided that the priority claim appeared in the published application, allowing a succession in title after filing of the subsequent application could not adversely affect third parties' expectations. Since there was no requirement for proof of transfer of the right of priority to be filed as a matter of course, third parties had to take into consideration that, where a claimed priority appeared in the published application, this priority, if assessed, would indeed turn out to be valid.

The board, however, does not consider it possible to change the conclusions it has reached on the basis of the clear wording of and the travaux préparatoires for the relevant legal provisions.

There might well be circumstances in which both parties concerned, i.e. the applicant of the priority application as the owner of the priority right and the applicant of a subsequent application as a potential successor in title, would welcome greater flexibility in making use of the right of priority.

However, an interpretation as proposed by the appellant would mean that it should be permissible for the applicant of a subsequent application who had not filed the priority application to make use of a right of priority owned by another person, and arrange for acquisition of that right only at a point in time when this becomes necessary, possibly up to the time when the patent is granted.

There can be no doubt that more flexibility is desirable from the point of view of the subsequent applicant, as it would increase his chances of validly claiming priority. However, it appears questionable whether this extension of the concept of the right of priority is indeed always desirable from the point of view of the applicant of the first application. If the "successor in title" requirement could be fulfilled after the filing of the subsequent application, this would mean that, by the time the applicant of the first application would himself have to file a subsequent application (12-month priority period), he would not know for sure whether an assignment would eventually take place. Postponing the final date to an even later stage would further mean that acquisition of the priority right could be influenced by the expected outcome of the grant proceedings, i.e. by whether the priority becomes relevant or whether a patent is granted at all.

The board accepts that transaction scenarios may, in practice, not always be simple. However, it also notes that, in situations in which the applicant of the priority application and the successor in title-to-be do not manage to arrange for a valid transfer of the priority application or of the right to claim its priority before the filing of the subsequent application, the subsequent application could be filed by the entitled person and be assigned, together with the other right(s), afterwards. Alternatively, both the applicant of the priority application and the successor in title-to-be could file the subsequent application jointly. The subsequent application would have been filed by the applicant of the priority application as co-applicant, and due to the unity of the application, the claimed invention would benefit from the right of priority. As the Enlarged Board in decision G 2/04 (OJ EPO 2005, 549, Reasons, point 2.2.1) put it, albeit in a different context: "This shows that available possibilities for organising industrial property matters ... entail different legal consequences and different possibilities as to how to safeguard a party's interests. Such differences alone, however, are no reason deliberately to ignore the legal consequences of the specific course of action chosen. Rather, there should be convincing reasons why such consequences might be not acceptable in a specific situation."
As to the aspect that third parties' legitimate expectations would not be adversely affected by permitting a succession in title to be effected after the filing of the subsequent application, the board considers this argument to be of little weight. On this basis it could also be argued that there should be no restriction on making changes to the disclosure of the application or remedying deficiencies as long as this is done prior to publication. What is important, in the board's view, is that the requirements of the EPC are fulfilled at the relevant point in time.

6.5.10 In view of the above considerations, the transfer of ownership of the Italian priority application and the right to claim priority from it from Tenaris Connections BV to Tenaris Connections AG as of 9 September 2003 (line of argument (i)), which occurred after the filing date of the subsequent application, was too late. On the basis of this transfer Tenaris Connections AG could not enjoy, for the purpose of filing the subsequent application, the right of priority in accordance with Article 87(1) EPC 1973.

6.6 Transfer of ownership with retroactive effect as of 1 January 2003 based on section 4 of Agreement D19 (line (ii))

6.6.1 Approach based on Italian law

The appellant submitted that the rights mentioned in Agreement D19 were validly transferred with effect from 1 January 2003 because on the basis of the principle of freedom of contract enshrined in Article 1322 of the Italian Civil Code it was permissible to provide for a retroactivity clause. In support, reference was made to legal opinion D21. The validity of the retroactive transfer was contested by the respondent.

Legal opinion D21, signed by two attorneys at law, deals on pages 2 to 5 with the "transfer of an IP right according to Italian law". The focus of this section lies on the argument that Tenaris Connections AG acquired legal ownership when it "carried out convincing behaviour", namely by filing the subsequent application (see point XIX above, Validity of the priority, line (iii)). In relation to a retroactive transfer it is merely stated that the "parties may also determine that property over the goods sold will be transferred only at a specified later date or at a prior date, i.e. retroactively, like it was the case of the contract for the transfer of the patent application and the priority right from Tenaris Connections BV and Tenaris Connections AG". As the basis for this statement, reference was made to Article 1322 of the Italian Civil Code, which reads (translation by the appellant): "The parties may freely determine the content of the contract within the limits imposed by the law and by the corporate rules. The parties may as well conclude contracts which do not appertain to those types which have a particular discipline, provided that they are directed to realise interests which merit protection following the legal order." Except for this, the legal opinion does not contain any further reasoning in support of a transfer with retroactive effect. The national court decisions cited in legal opinion D21 relate to different issues (see also point 6.6).

In these circumstances, the legal consequences of section 4 of Agreement D19 under Italian law, in particular the extent to which a retroactive effect would be recognised, have not been established by the appellant to the satisfaction of the board. Accordingly, the board was unable to conclude that, when the subsequent application was filed, Tenaris Connections AG was the successor in title on the basis of section 4 of Agreement D19 when applying Italian law.

6.6.2 Approach based on Dutch law

With regard to Dutch law, it is uncontested that what was transferred with retroactive effect was not the legal title but the economic ownership ("economische eigendom"). The appellant also confirmed at the second oral proceedings (cf. minutes, page 7, last paragraph, to page 9, first paragraph) that, when the parties to the contract entered into it, they agreed that solely the economic ownership was to be transferred to Tenaris Connections AG with retroactive effect, but not also the legal title. Whereas Tenaris Connections AG was entitled, retroactively as from 1 January 2003, to all benefits and revenues from the transferred rights and bore the costs and risks in relation to the transferred subject-matter, Tenaris Connections BV remained the legal owner and retained the legal title until 9 September 2003, the date on which Agreement D19 was concluded (see also legal opinion D20, points 2.2 to 2.5). Therefore, on the basis of the retroactive effect, when the subsequent application was filed Tenaris Connections BV was the sole owner of the legal title and Tenaris Connections AG had economic ownership. According to the appellant, the economic ownership that Tenaris Connections AG had acquired could be qualified as a licence (cf. minutes of the second oral proceedings, page 7, third paragraph).

For the present purposes there was no further need for the board to clarify whether section 4 of Agreement D19, due to its reference to "Patents" and the definition in section 1, related only to the priority application or whether it also comprised the right to claim priority from that application. The board accepted that the retroactive effect should indeed apply to both.

In order to show that the transfer of "economische eigendom" on the basis of section 4 of Agreement D19 was to be considered a "succession in title" under Dutch law the appellant referred to the Nebula decision of the Dutch Hoge Raad (decision of 3 November 2006, NJ 2007, 155; cf. legal opinion D20, point 2).

The board accepts that "economische eigendom" exists as a legal concept under Dutch law. However, it is not derivable from the decision relied upon, nor has it been shown by the appellant to the satisfaction of the board, that the transfer of "economische eigendom" on the basis of a contractual agreement is to be considered, under Dutch law, as a "succession in title" for the purpose of claiming priority from an earlier patent application, i.e. as having the consequence that the successor in title would be considered, under Dutch law, to be entitled to claim priority from an earlier application. For the relevant point in time, namely the filing of the subsequent application, the arrangement amounted in the board's view to a limited transfer of rights, as opposed to a transfer of overall rights of ownership. This was not sufficient for Tenaris Connections AG to become a successor in title within the meaning of Article 87(1) EPC 1973. The appellant's further arguments in this context did not lead to a different finding by the board.

(a) Decision J 19/87

The appellant relied in its submissions on decision J 19/87, in which a transfer of the "equitable interest" under English law was found to be sufficient.

However, the situation underlying J 19/87 is to be distinguished from the present one. Therefore, a different finding would not contradict this previous decision.

In J 19/87, the inventor Mr B had assigned to a company his rights in the invention and in the UK patent application that he had filed, together with the right to file further applications and the right to claim priority from the UK application. Agreeing that the first assignment was void, the company assigned the rights back to the inventor by an agreement under seal. The inventor then filed a European patent application claiming priority from the earlier UK application. However, the second agreement had not been signed by the inventor, with the effect that, under the relevant provisions of the UK Patents Act then in force, which required the signature of both parties for the assignment of a patent application, he became the owner of the invention, but not the owner of the UK patent application. As regards the application, he became "entitled in equity" and was entered as such on the Register of Patents in the UK.

In these circumstances, the deciding board held that when the European application was filed, the inventor "was entitled to the right to apply for and be granted a European patent in respect of the invention the subject of the UK application, having regard to Article 60 EPC, first sentence. Furthermore, ... under Article 87(1) EPC on [the date on which the European application was filed] Mr B[...] enjoyed, for the purpose of filing the European patent application ..., a right of priority" (cf. J 19/87, Reasons, point 2).

The board notes that this conclusion was drawn from a situation in which the relevant assignment agreement, by which ownership was to be transferred, was concluded prior to the filing of the subsequent application and was defective solely for formal reasons. The formal defects in the assignment could have been remedied by the contracting parties at any moment after its conclusion, and this remedy was legally possible under English law. In the present case, the parties contractually agreed that the assignment agreement, which was concluded after the filing date of the subsequent application, should have retroactive effect in relation to the transfer of economic ownership only. It was not intended that the legal title too should be transferred as from the earlier date, nor could it have been acquired.

Moreover, as follows from J 19/87, Reasons, point 2, and page 5 of the legal opinion given in that case (cf. enclosure of legal opinion D28), the "equitable assignment" was registrable on the UK patent register and registration had indeed taken place. As to the present case, according to the appellant's explanation, registration of economic ownership in the patent register was not provided for under Dutch patent law. Economic ownership could be defined as a licence, and licences were clearly registrable. However, no registration in the Dutch patent register had been effected for Agreement D19.

With regard to the appellant's argument that "economische eigendom" was the same as ownership "in equity" as in decision J 19/87 and that, for this reason, a similar approach should be taken, the board agrees with the respondent that these concepts are to be distinguished from one another. The "title in equity" under English law, with which J 19/87 was concerned, arose in a particular situation and can, in the board's view, not be taken out of its context but should be confined to the facts of that case.

(b) Travaux préparatoires to the Paris Convention

The appellant further referred to the legislative history of Article 4A(1) Paris Convention as amended by the Washington Conference in 1911, and argued that the travaux préparatoires would not support the conclusion that an actual transfer of ownership of either the priority application or the priority right originating from it was required. In the appellant's view, the concept of "ayant cause" was not seen as limited to a transfer or cessation, as was clear from the unchallenged position of the UK delegate that this expression was equivalent to "heirs, executors, administrators and assigns" (see Actes de Washington, supra, page 247). The appellant further submitted that "administrators" and "executors" were generally not legal owners but only "people acting with some form of authorisation from the legal owner and are thus entitled to represent that legal owner or can be assumed to act with the legal owner's contractual consent" (cf. legal opinion D28, point 3.9).

Without further considering the legal impact which the declaration of one member of the Paris Union has on the interpretation given to the Paris Convention by other Union members or on the EPO, the board notes that there is no clear information on file on the concept of "administrators" and "executors" as referred to by the UK delegate. In the light of the respondent's submissions that the laws in the UK were different, the appellant's alleged definition of the terms "administrators" and "executors" is too vague for the board to establish to its satisfaction that both concepts as referred to by the UK delegate are similar to the owner of the "economische eigendom" under Dutch law as transferred by Agreement D19. The concept of "ayant cause" as understood by the UK delegation does not become clearer on the basis of the report of the Conference concerning the addition of this term, which indicates that the UK delegation accepted it "sous la réserve que la signification des mots « ayant cause » est limitée aux « cessionnaires » et représentants légaux" (see Actes de Washington, supra, page 275).

Hence, in view of the lack of clarity as to the meaning of the terms cited by the appellant, the board considers that the reference to the travaux préparatoires to the Paris Convention does not support the appellant's case.

(c) Decisions T 205/14 and T 517/14

In support of its argument that obtaining "economic ownership" under Dutch law on the basis of section 4 of Agreement D19 should be accepted as "succession in title", the appellant also relied on the statement in decisions T 205/14 and T 517/14 that assessing whether the applicant is a "successor in title" within the meaning of Article 87(1) EPC 1973 "is the exclusive concern of national law" (cf. T 205/14, Reasons, point 3.6.3, and T 517/14, Reasons, point 2.7.3).

The board notes that this statement was made to refute the argument that the EPC legislator did not intend to burden the EPO with questions of national law and that therefore the issue should be solved on the basis of Article 60(1) and (3) EPC 1973. This board agrees with the statement in these two decisions but fails to see a conflict with the above-mentioned passages relating to the "exclusive concern of national law" cited by the appellant, given that, in the present case, the board could not establish on the basis of the appellant's submissions that Tenaris Connections AG was, when the subsequent application was filed, the "successor in title" under any of the national laws relied on by the appellant. The board notes, however, that the reference to "national law" might, depending on how the relevant law that governs the requirements for a "succession in title" under Article 87(1) EPC 1973 is to be determined, need further interpretation. This question did not arise in the present case since it concerned an Italian priority application that was transferred by a Dutch company on the basis of a contract that, according to the agreement itself, should be governed by the laws of the Netherlands, and, as set out above, the appellant based its arguments only on Italian and Dutch law.

(d) Should economic ownership of Tenaris Connections AG acquired under section 4 of Agreement D19 suffice?

The appellant argued that, for tax purposes, economic ownership generally sufficed to have the economic owner treated as the proprietor (cf. legal opinion D21, page 3). However, in the board's view, this is not sufficient for it to be accepted as succession in title in the present context. The board acknowledges that, in the area of tax law, economic considerations may prevail for the allocation of subject-matter to natural or legal persons and that patents, including applications and priority rights, are important economic assets.

On the other hand, the board notes that the provisions of the EPC governing the filing and examination of patent applications and the validity of granted patents are more specifically characterised by a formal allocation of the application or patent to a person (or jointly to a group of persons), on the basis of the act of filing. A multiplicity of rights and roles is generally avoided (cf. Article 60(3) EPC 1973, Article 61 EPC, Article 118, first sentence, EPC 1973). Moreover, the priority right under Article 4A Paris Convention and Article 87(1) EPC 1973 originates in the person of the applicant, irrespective of entitlement to the invention.

In the present situation, legal ownership and economic ownership became separated due to the retroactive effect contractually agreed upon between Tenaris Connections BV and Tenaris Connections AG after the filing date of the subsequent application. Tenaris Connections AG was to be the owner of (only) the "economische eigendom" of the priority application or the priority right derived from it as of a date preceding the filing of the subsequent application. This is a limited transfer of ownership, and for that reason Tenaris Connections AG is, in the board's view, not to be considered a "successor in title" within the meaning of Article 87(1) EPC 1973. As of the original date, legal ownership remained vested in Tenaris Connections BV, the applicant of the priority application. The board also sees no reason why the economic ownership obtained by Tenaris Connections AG, which according to the appellant's submissions could be defined as a contractual licence, should be a basis for claiming priority or prevail over legal ownership retained by Tenaris Connections BV. In this context, the board also notes that no evidence was filed by the appellant demonstrating that acquisition of "economische eigendom" under Dutch law (or economic ownership in general) has been accepted by a national court as "succession in title" in the context of claiming priority or in the area of patent law in general.

6.6.3 Because Tenaris Connections AG did not, together with the economic ownership, acquire the legal title with retroactive effect, it is not necessary to decide on the further question of whether the retroactive effect of the contractual agreement valid under national law would have to be acknowledged under Article 87(1) EPC 1973 or on the relevance of the findings of the Enlarged Board of Appeal in decision G 1/13 (OJ EPO 2015, A42) in this respect.

6.6.4 Hence, in light of the above, the board concludes that Tenaris Connections AG was not the successor in title within the meaning of Article 87(1) EPC 1973 on the basis of section 4 of Agreement D19 (line of argument (ii)) when the subsequent application was filed.

6.7 Transfer agreement "by carrying out convincing behaviour within a corporate group", namely by filing the subsequent application (line iii)

The respondent questioned the applicability of Italian law, on which the appellant had based this line of argument. However, this question does not need to be answered in the present circumstances. The board accepts that, as argued by the appellant, patent applications and priority rights may be transferred under Italian law "by carrying out convincing behaviour" or "by conclusive action", which was understood by the board to mean in the present case that a transfer allegedly occurred on 6 September 2003 by means of an agreement implied by conduct, namely by the filing of the subsequent application on behalf of Tenaris Connections AG, claiming priority from the earlier application filed by Tenaris Connections BV, a company within the same corporate group.

However, in the board's view, such a transfer has not been proven. In this context, the board has taken the approach that Article 72 EPC 1973 provides no basis for imposing formal requirements for a transfer of the Italian priority application or the priority right derived from it and has assessed the evidence provided on the basis of the principle of free evaluation of evidence (see also decisions T 205/14, Reasons, point 3.6.1, and T 517/14, Reasons, point 2.7.1).

Tenaris Connections BV and Tenaris Connections AG are separate legal persons belonging to the same corporate group. Legal acts such as the filing of patent applications or oppositions are to be attributed to the legal person that performed them, and not to the corporate group (see also T 5/05, Reasons, point 4.3; G 2/04, supra, Reasons, point 2.2.1). The priority application and the right to claim priority from it were therefore to be attributed to Tenaris Connections BV, subject to a later transfer.

The appellant argued that the fact that the subsequent application was filed in the name of Tenaris Connections AG, claiming priority from the earlier application filed in the name of Tenaris Connections BV, implied that an agreement as to the transfer of ownership of the priority application or the priority right arising from it was manifested between the two companies by virtue of the filing of the subsequent application.

In the board's view, however, the sole act of filing a subsequent application of one company of a corporate group which claims priority from an earlier application of another company of the same corporate group does not clearly imply that there was a mutual agreement between the companies concerning a transfer of ownership of the priority application or the priority right arising from it.

The appellant pointed out that, in claiming priority, the content and data relating to the unpublished priority application must have been known to Tenaris Connections AG. However, whether or not data relating to a filed patent application, or its content, is available not only to the company that is the applicant of the application but also to other companies of the corporate group is one issue. A further, different issue is whether a company within the same group has acquired ownership of another company's patent application or the right to claim priority from it and, if so, under what circumstances this occurred.

In support of its argument for a "transfer by convincing behaviour", the appellant referred to decisions of Italian courts relating to trade marks. The board notes that no Italian case law concerning a transfer of a patent application or the right to claim priority from it was cited. Moreover, in the extract from the decision presented by the appellant concerning the "theory of the group trade mark" and the "free circulation inside the group" it is stated that "there is no need to use the scheme of the contract of licence ... in the presence of productive or commercial contracts, which comprise ... enterprises which operate ... according to unitary decisions of industrial policy" (see appellant's letter of 3 July 2015, page 6, third paragraph). The board notes that in the present case no "productive or commercial contract" or comparable evidence is on file.

The further court decisions cited by the appellant (see legal opinion D21, page 5, second and third paragraphs) mention the existence of declarations as to which party is the owner. The appellant referred in this context to Agreement D19, arguing that it was produced by the parties as written evidence of the previously concluded assignment ("ad probationem"). The respondent pointed out that Agreement D19 did not mention any contract as having already been concluded and that it contradicted the allegation that a transfer had already occurred upon filing of the subsequent application.

In the board's view, in the light of the text of Agreement D19 ("hereby assigns and transfers") and in the absence of any reference or hint in respect of an earlier transfer, an ordinary reader of Agreement D19 would not assume that a transfer of the rights mentioned in Agreement D19 had already occurred prior to its conclusion. There is no indication of the purpose of the clause in Agreement D19 providing for retroactive effect, and hence it is not clear whether it aims at formalising an earlier agreement made in non-written form or at actually producing earlier effects. A contract concluded with a retroactive clause is no proof that rights have already been transferred before the date of its conclusion.

The appellant submits that it was not unusual for "ad probationem" agreements to be drafted in such a way and that this was done in the present case in order to have a valid agreement in case the previous transfer was not accepted; but this is an unproven allegation, not supported by any evidence. Similarly, the filing of the subsequent application in the name of Tenaris Connections AG, which occurred before the conclusion of Agreement D19 but later than the date envisaged for the retroactive effect, cannot serve as proof in this context in itself.

Finally, the reference to the "Fahrzeugscheibe" decision of the German Federal Court of Justice (BGH, X ZR 49/12 of 16 April 2013) does not support the appellant's argument either. In that case, the Federal Court of Justice accepted that there had been a transfer of the priority right between companies of the same group implied by conduct under German law prior to the filing of the subsequent application. However, the situation as regards the evidence on file was quite different: in particular, there was proof that there was a contract on co-operation in research and development which had been concluded between the companies of the corporate group prior to the filing of the applications and which addressed the issue of industrial property rights. Furthermore, there was evidence of a communication from the company which had filed the priority application to the holding company, addressing the question of an extension of patent protection to other countries, which in the light of the existing contract was interpreted by the court as an offer of a transfer, as well as evidence of a copy of the internal files of the holding company predating the filing of the subsequent application, which was interpreted as the acceptance of the offer that did not have to be expressly declared in view of a waiver contained in the existing contract. No comparable evidence which could have been evaluated by the board was submitted by the appellant in the context of the line of argument relating to a transfer upon filing of the subsequent application (line (iii)), and the evidence submitted by the appellant in the context of the line concerning a transfer by an agreement "manifested by conclusive action" prior to the subsequent filing (line (v)) was not admitted into the appeal proceedings inter alia because it was considered not to be highly relevant (see point 2.3 above).

Thus, in view of the above the board comes to the conclusion that an agreement for a transfer of the priority application or the priority right arising from it from Tenaris Connections BV to Tenaris Connections AG implied by conduct, as manifested by the act of filing the subsequent application, has not been sufficiently proven.

6.8 For these reasons, the board cannot concur with any of the appellant's lines of argument (i) to (iii) submitted in support of the validity of its priority claim and to be assessed as to their merits. Therefore, the priority claimed in the patent in suit is not valid.

7. Referral to the Enlarged Board of Appeal

7.1 According to Article 112(1)(a) EPC 1973, a board may, either of its own motion or following a request from a party, refer any question of law to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises.

The appellant has based its request for a referral on both alternatives, uniform application of the law and the arising of an important point of law (see point XV above for the wording of the proposed questions).

7.2 Uniform application of the law

With regard to the first alternative, the appellant referred to Article 21 RPBA, but that relates to a situation where a board considers it necessary to deviate from an earlier opinion or decision of the Enlarged Board. That is not the case here. As set out above (see point 6.5.3), the question of a general acceptance of a retroactive effect, for which decision G 1/13 (supra) might have been of relevance, and the resultant question whether the present situation is comparable to the one in case G 1/13 did not in fact arise.

The appellant argued that the board deviated from decisions T 62/05 and T 1008/96 in the context of the assessment of Agreement D19 and from decisions J 19/87, T 205/14 and T 517/14 in the context of the qualification of "economische eigendom". As set out above (see points 6.4.5, 6.5.2(a) and (c)), the board does not consider that there are any contradictions with these decisions, particularly in view of the differing situations underlying the respective cases.

In as far as the appellant relied on a deviation from the decision of the German Federal Patent Court of 28 October 2010 (11 W (pat) 14/09), the board notes that this approach does not seem to be followed by the German Federal Court of Justice (Fahrzeugscheibe decision of 16 April 2013, X ZR 49/12, Reasons, point II.2.a)). Moreover, Article 112 EPC 1973 is concerned with a uniform application of the law within the boards, and thus a referral cannot be based on divergence from national court decisions. However, this does not, of course, mean that the boards pay no attention to developments in jurisprudence before national courts.

The appellant also argued that a uniform application of the law was not ensured if the question of whether a person is a "successor in title" was to be answered on the basis of national law, because the result could vary, depending upon the applicable law. Instead, uniform application of the law required the concepts of both succession in title and enjoyment of priority right to be primarily, if not exclusively, governed by convention law rather than national law.

The board notes that the appellant had never contested in the proceedings before the board that national law should apply, even though the opposition division and the board had from the outset followed this approach. The appellant also acknowledged that there were differences depending on the national law which was applied (cf. legal opinion D20, points 2.5 and 4). The argument that the issue should be dealt with primarily by the law of the EPC was raised only in the context of whether or not to refer questions to the Enlarged Board.

In this respect, the board reiterates what was already held in decisions T 205/14 (Reasons, point 3.6.2) and T 517/14 (Reasons, point 2.7.2), namely that the EPC does not establish a fully harmonised patent system and that the question of who can be a "successor in title" within the meaning of Article 87(1) EPC 1973 must, in the absence of EPC provisions governing this question, be answered on the basis of national law. Also, otherwise situations such as a transfer by operation of law would not be covered. Moreover, in other decisions of the boards too, the assessment of "successor in title" was made on the basis of national law (see J 19/87, Reasons, point 2; T 1008/96, Reasons, point 3.3; T 160/13, Reasons, point 1.1). Decision T 62/05, which applied the requirements of Article 72 EPC 1973 in assessing the validity of a contractual transfer of the priority right, appears to be an isolated one and not further followed (see in this respect T 205/14, Reasons, point 3.6.1, and T 517/14, Reasons, point 2.7.1).

That national law applies in this context is therefore based on a uniform approach of the boards of appeal. It has also not been argued that relevant national law is, in the present case, applied by this board in a different way than in an earlier decision by any board.

7.3 Important point of law

7.3.1 An "important point of law" within the meaning of Article 112(1)(a) EPC 1973 arises if that point is of fundamental importance in that it is relevant to a substantial number of similar cases and is therefore of great interest not only to the parties to the present appeal but also to the public at large (see e.g. T 271/85, OJ EPO 1988, 341; G 1/12, OJ EPO 2014, A114, Reasons, point 11). However, even in such a situation, the board should make a referral only if it considers that a decision by the Enlarged Board is required.

7.3.2 In the present case, the board had to rule whether a transfer of ownership of the priority application or the priority right derived from it which occurred at a point in time which was (1) after the filing of the subsequent application, (2) after expiry of the 12-month priority period, and (3) after the filing of the declaration of priority was sufficient for a succession in title within the meaning of Article 87(1) EPC 1973. The board acknowledges that this may affect a number of cases.

However, the board reached its conclusion on the basis of the wording of the provisions of the EPC and the Paris Convention and considered the result confirmed by their purpose and the travaux préparatoires. The approach taken is consistent with the existing case law of the boards of appeal and of national courts, and the board was therefore able to decide on the issue free from any doubts.

7.3.3 Concerning the question whether "economische eigendom" under Dutch law acquired by section 4 of Agreement D19 qualifies as a "succession in title" within the meaning of Article 87(1) EPC 1973, it appears doubtful that it would be relevant to a substantial number of similar cases. Even if this was the case, the board considered itself in a position to resolve the issue on its own.

The board acknowledges, as pointed out by the appellant, that, in view of the board's finding that the priority was invalid, the appeal had to be dismissed and the revocation of the patent in suit became final with this decision, and that this is irremediable due to the board's capacity as being the first and final judicial instance and the fact that no further proceedings as to the merits of the case are available for the appellant.

The final-instance aspect is inherent in all proceedings before the boards of appeal and therefore not in itself a determining factor in the assessment of a referral. Also, there is an omnipresent risk that, once a board has taken a decision, its approach may be seen differently by another board or even be superseded by a later opinion or decision of the Enlarged Board. Deciding cases and thereby actively taking part in the further development of the jurisprudence relating to the European patent system is one of the natural duties of the boards of appeal.

In support of its argument for a referral concerning the interpretation of the concepts "succession in title" and "enjoyment of a priority right", the appellant has also referred to Article 1 of the First Protocol to the ECHR and Article 17 of the Charter of Fundamental Rights of the European Union, which provide guarantees for the protection of "property" or "possession", concepts covering proprietary interests and rights of commercial value. The appellant emphasised in this context that, according to the Anheuser-Busch v Portugal judgment of 1 November 2007, the role of the European Court of Human Rights was to ensure that decisions of courts "are not flawed by arbitrariness or otherwise manifestly unreasonable". A referral to the Enlarged Board was warranted, "to make sure that Tenaris Connection A.G. will not suffer from arbitrary interpretations of article 87(1) EPC".

Leaving aside considerations of whether and under what circumstances the board is bound by the cited legal provisions, the board appreciates the importance of the issues in question for the appellant. However, it does not share the appellant's concern that its interpretation of Article 87(1) EPC 1973 is arbitrary.

7.4 For the above reasons, the appellant's request for a referral to the Enlarged Board of Appeal must be refused.

MAIN REQUEST AND FIRST AUXILIARY REQUEST

8. Inventive step starting from document D2, Article 56 EPC 1973 [...]

8.7 Hence the subject-matter of claim 1 of the first auxiliary request is obvious to the person skilled in the art and therefore does not involve an inventive step within the meaning of Article 56 EPC 1973.

SECOND AND THIRD AUXILIARY REQUESTS [...]


10. Novelty and inventive step, Articles 54(1), (2) and 56 EPC 1973 [...]

11. In view of the above, none of the appellant's main request and first to third auxiliary requests is allowable. Therefore, the appeal must be dismissed.

12. The appellant's request for reimbursement of the appeal fee

Pursuant to Rule 67 EPC 1973, a prerequisite for reimbursement of the appeal fee is that the appeal is deemed to be allowable. Since the appeal must be dismissed (see point 11 above), the appellant's request for reimbursement of the appeal fee is to be refused.

13. Apportionment of costs

13.1 The appellant's request for a different apportionment of costs relates to costs incurred during the proceedings before the opposition division.

The appellant did not request a different apportionment of costs during the proceedings before the opposition division, and the opposition division did not consider this of its own motion. Accordingly, no decision on this issue was taken by the opposition division.

Concerning the reasons for requesting a different apportionment of costs at the appeal stage only, the appellant admitted that it had not been considered such a request until after the oral proceedings before the opposition division (cf. minutes of the first oral proceedings, page 7, third paragraph). In view of this, the appellant's further argument that it had not been asked by the opposition division at the end of the oral proceedings about any further requests loses relevance.

Under Article 104(1) EPC, each party to the opposition proceedings bears the costs it has incurred, unless the opposition division, for reasons of equity, orders a different apportionment of costs. Pursuant to Rule 88(1) EPC, if an apportionment of costs is ordered it must be dealt with in the decision on the opposition. Rule 97(1) EPC further provides that an apportionment of costs of opposition proceedings cannot be the sole subject of an appeal.

The board infers from these provisions that the apportionment of costs incurred in the proceedings before the opposition division is a separate decision to be taken by the opposition division and that, if such a decision was taken by the opposition division, it can in specific circumstances be reviewed within the framework of an appeal. However, if no decision has been taken by the opposition division on an apportionment of costs, the board cannot consider and decide upon an appellant's request, presented for the first time in appeal, relating to an apportionment of costs incurred in the proceedings before the opposition division (similar in T 1059/98, Reasons, point 2.2).

13.2 Therefore the request for a different apportionment of costs must be refused.

Order

For these reasons it is decided that:

1. The appellant's objection under Rule 106 EPC submitted in writing during the oral proceedings on 14 April 2016 is dismissed.

2. The appellant's request for a referral to the Enlarged Board of Appeal is refused.

3. The appeal is dismissed.

4. The appellant's request for a reimbursement of the appeal fee is refused.

5. The appellant's request for a different apportionment of costs is refused.

This decision T 577/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T057711.20160414. The file wrapper can be found here. Photo "assignment" by Sean MacEntee obtained via Flickr under CC BY 2.0 license (no changes made).
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