by Dr. Michael Dey, Patent Attorney and Partner at Weickmann & Weickmann
1. In appeal proceedings, is the right to oral proceedings pursuant to Article 116 EPC restricted if the appeal appears to be inadmissible at first sight?
2. If the answer to question 1 is yes, is an appeal against the decision granting a patent in that sense inadmissible at first sight, which a third party according to Article 115 EPC has lodged and justified by the fact that there is no alternative remedy under the EPC against a decision of the Examining Division not to take into account his objections concerning an alleged infringement of Article 84 EPC?
3. If the answer to one of the first two questions is no, may the Boards, without infringing Article 116 EPC, hold oral proceedings in Haar if the Appellant had complained that this location does not comply with the EPC and had requested to move oral proceedings to Munich?
In oral proceedings before the Enlarged Boards of Appeal, the Chairman Mr. Josefsson expressed doubts as to admissibility of referred question 1, in particular whether the required relevance is given as well as whether possible concrete effects of the answer to the referred question for the underlying proceedings are to be expected. After closing of the discussion regarding admissibility, referred questions 1 and 2 were discussed objectively. Thereby, the parties as well as the representative of the president of the European Patent Office presented their positions, partly referring to the different amicus curiae letters filed.
The representative of the appellant particularly emphasized that the right to be heard represents a valuable asset and should not be restricted without more ado. Concerning referred question 2 he argued that clarity pursuant to Article 84 EPC is solely examined in examination proceedings and not in subsequent opposition or nullity proceedings. The instruments provided by the EPC are third party observations pursuant to Article 115 EPC, by which clarity deficiencies can be objected during examination proceedings. However, if such clarity objections are not at all or not sufficiently considered by the Examining Division, appeal procedures should be open for the submitter of the third party observation, since otherwise legal certainty is at risk due to unclear claims. The representative of the appellant as well as the representative of the president of the European Patent Office were of the opinion that legal remedies available are regulated in the EPC and therein a right of appeal after filing a third party observation pursuant to Article 115 EPC is just not provided. Accordingly, referred question 2 should be answered with yes, namely that such an appeal is inadmissible in order to not establish a new instrument for delaying grant proceedings.
Referred question 3 dealt with the seat of the Boards of Appeal and the location where oral proceedings before the Boards of Appeal take place. The Boards of Appeal of the European Patent Office have their new official seat in Haar since October 2017 and oral proceedings are regularly scheduled and conducted there. In the referring decision T 0831/17 now the question was raised whether oral proceedings in Haar near Munich are in agreement with the requirements of the EPC and in particular with the requirements with regard to the right to be heard pursuant to Article 113 EPC, the requirements for oral proceedings pursuant to Article 116 EPC and the indications with regard to the seat pursuant to Article 6 EPC. According to Article 6 of the European Patent Convention the European Patent Organisation has its seat in Munich. According to Article 6(2) EPC the European Patent Office is located in Munich. It has a branch in The Hague. According to T 0831/17, due to the wording of the EPC, the fundamental question of the right place of oral proceedings in appeal proceedings arises in order to ensure correct summoning of the parties to this place and therefor the granting of the right to be heard correctly.
The representative of the president of the European Patent Office stated that Article 6(2) EPC does not contain a restriction to city boundaries and that a flexible understanding of the indication Munich has to be applied as also the indication The Hague does not oppose the branch in Rijswijk. Further, Article 6(2) EPC does not justify a restriction of the place of oral proceedings.
After a longer consultation break the Chairman Mr. Josefsson announced the decision of the Enlarged Boards of Appeal as follows:
Ad 1. Referred question 1 is considered inadmissible.
Ad 2. A third party according to Article 115 EPC, who has lodged an appeal against the decision of a patent division has no entitlement to oral proceedings for correction of deficiencies according to Article 84 EPC. Such an appeal does not have a suspensive effect.
Ad 3. The scheduling and conduction of oral proceedings of the Boards of Appeal in Haar does not violate Articles 113(1) and 116(1) EPC.
With the answer to referred question 2 the Enlarged Boards of Appeal cut off the possibility to unduly delay grant of patents by formal requests. However, the problem remains that for third parties there is no possibility to object lacking clarity of claims after grant of a patent, so that a legal uncertainty remains for unclear claims.
Due to the answer to referred question 3, also in the future, oral proceedings before the Boards of Appeal may take place in the new buildings in Haar and no transfer of oral proceedings to the city area of Munich is required.
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