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G1/12 – Probably the most exciting G decision ever

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epologoOkay – I admit it – that’s a massive lie. Decision G1/12 of the Enlarged Board of Appeal, which issued on 30 April, is not exactly a thrills-and-spills ride. The questions are uninspiring, and there is some pretty beardy, academic stuff in the Decision, but it’s all about the sort of procedural stuff that could just save a representative’s behind from the gluepot one day, so if you’re an EPA, I suppose it might be worth a cursory glance.

If you don’t have the time to wade through it yourself, the headline is: if you accidentally name the wrong Appellant on a notice of appeal, but you intended to name the right one, and the right one is inferable from the file, you can correct it. Which we pretty much knew (or at least suspected) already given existing case law, but now we know it a bit more. If you want to find out how getting to that earth-shattering conclusion could possibly have required the input of the EBA, here’s a run-down of events. Peruse through it while I write to Alton Towers and suggest that they call their next rollercoaster the G1/12-o-nator.

The appeal relates to EP1140330, which was filed in the name of Zenon Environmental Inc. The granted patent was transferred to Zenon Technology Partnership while opposition proceedings were on-going, and the transfer was recorded with the EPO. The patent was subsequently revoked by the Opposition Division, and in its decision Zenon Technology Partnership was cited as the proprietor.

The proprietor appealed the decision, but the name of the Appellant was given as Zenon Environmental Inc – a party not adversely affected by the decision, since it was no longer the proprietor and not party to the opposition, and hence not entitled to appeal. Realising its mistake, Zenon Technology Partnership sent a letter explaining that the appeal should, of course, have been filed in the name of Zenon Technology Partnership, and requested correction of the error.

The opponent challenged the admissibility of the appeal on the basis that the Appellant was not entitled to appeal; the proprietor formally requested correction under Rule 139 EPC, or under Rule 101(2) EPC. Written arguments were exchanged. Case law was cited. Oral proceedings were held.

In the Oral Proceedings, the Board noted that, without correction, the appeal was inadmissible because the named Appellant was not entitled to appeal. It also observed that:

Rule 101(1) permits correction of deficiencies in the notice of appeal, but only if the deficiency is remedied within the appeal period, which was not the case here, so the error could not be corrected under Rule 101(1).

Rule 101(2) allows correction of a deficiency if the appeal does not comply with Rule 99(1)(a)  (which requires, inter alia that the appeal contain the name and address of the Appellant) and the board invites the Appellant to correct that deficiency. The Board noted that an Appellant was fully identified in the notice of appeal, even if it was an incorrect Appellant, and so it could be deemed to be the case that there is no deficiency under Rule 99(1) to correct. On this basis, the Board formed the initial view that Rule 101(2) could only justify a correction of a deficiency that involves completing the Appellant’s identity if its identity was not fully provided in the notice of appeal, and would not be admissible.

This left Rule 139, which allows correction of errors and mistakes in documents filed with the EPO on request.

The Board found conflicting case law on the admissibility of a correction to an Appellant’s name. In some cases correction was allowed under Rule 101(2), if it was possible to infer the identity of the real Appellant from the file, and provided it could be established that the true intention had been to file an appeal in the name of the correct Appellant. In other cases, correction of an Appellant’s name had been refused, but in these cases the refusal was on the basis that it was a mistake of law rather than a remedial error – for example, a transfer of the patent had occurred, but had not been recorded, and the new, unregistered, proprietor had attempted to appeal a decision. In still other cases, Rule 139 EPC had been used to correct the Appellant’s name.

The ‘conflict’, therefore, does not appear to have been whether or not the Appellant’s name could be corrected, but rather whether the legal basis for the correction should be Rule 101(2) or Rule 139 EPC.

Fascinating stuff.

The Board was undecided as to whether or not there was a ‘deficiency under Rule 99(1)’ that could be rectified by Rule 101(2), and undecided on the role of the ‘true intention’ of the Appellant, and referred the case to the EBA.

A (reasonable!) question was raised as to whether or not the referral was really admissible, on the basis that there was no real ‘conflict’ in the case law, and the application of the law was clear enough for the Appeal Board to make its own decision.

The EBA also considered the issue of whether or not an EBA referral of a question relating to the admissibility of an appeal was itself admissible, given that the appeal had not yet been admitted. If the referral were to be deemed admissible, would the appeal itself then have to be presumed admissible by implication? It all gets a bit meta there.

But the EBA decided that all was well – a question on admissibility of an appeal could be referred, and that the questions referred raised points of law of fundamental importance and that the question over which legal basis should be applied for the correction was ‘conflict’ enough, and so the referral was admissible.

So on to the questions and the EBA’s answers.

It is quite remarkable just how much the EBA has managed to write in its consideration of the answers to these questions – twenty seven pages of reasoning and case law, pored over (we presume) by highly-qualified EBA members – and it will send even the most eager EPC-enthusiast straight into a slumber. It’s almost like the EBA needs to find something to fill its days…

The gist of it is this:

(1) When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for a substitution by the name of the true appellant?

Answer: YES… provided the requirements of Rule 101(1) EPC have been met.

The EBA fully endorsed the case law in which it was considered that an incorrect indication of an Appelant’s identity is a deficiency under Rule 101(2) EPC, and found no reason not allow correction of such a deficiency in response to a communication from the Board of Appeal pointing out the error.

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

“Answer”: “Proceedings before the EPO are conducted in accordance with the free evaluation of evidence. This also applies to the problems under consideration in the present referral”.

Well that’s cleared that one up then.

(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of Rule 139 EPC?

Answer: “In cases of an error in an Appellant’s name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established by the case law of the boards of appeal.”

So Rule 139 can indeed rescue you if Rule 101(2) can’t… subject to conditions in the case law etc etc.

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

Answer: Not answered, in light of answers above.

So that’s that. Some pretty obvious answers to some extremely dull questions, but I guess it gave some people in the EPO something to do for a few months of the year. And for anyone who has made it all the way to the end of this post, my congratulations on your endurance!

Emily Weal  9 May 2014


10 Comments

  1. Ronald Noll says:

    Thank you Emily. That IS a very entertaining post 😀

  2. anon says:

    G1/12 perhaps not, but R19/12 certainly is.

  3. Tim says:

    And even a dissenting opinion in G1/12, so it has truly been an exciting and provoking case for the EBA. And indeed, I look forward to hear some comments on R19/12.

    • fish says:

      How do you know about the existence of a dissenting opinion? For R19/12 you may have a look at the EPLAW blog.

      • Tim says:

        Well, it is in paragraphs 42 to 49 of G 1/12: “In the opinion of the minority, the present referral is
        inadmissible for the reason that the referring decision shows no need for a decision [the EBA]”. And then add 12 pages as to why the referral should be inadmissable.

  4. Tim says:

    [Now with spell check] Well, it is in paragraphs 42 to 49 of G 1/12: “In the opinion of the minority, the present referral is inadmissible for the reason that the referring decision shows no need for a decision of [the EBA]”. And then they add 12 pages as to why the referral should be inadmissible.

  5. Tim says:

    Now, can someone help be with T 0707/13? A decision of 5 May 2014, just a few days later, wherein there was also a problem of the company name in the notice of appeal (AGCO Ltd. or AGCO SA) , but now the appeal is held inadmissible. Seems contrary to G1/12 in a rather nasty way, or do I miss something?

    • ipcopyemily says:

      As far as I can see, in T0707/13, the Appellant was correctly identified as AGCO SA, but the notice of appeal was filed on the letter head of AGCO Ltd, and the only address that appeared in the notice of appeal was the address given on that letter head – i.e. the incorrect address of AGCO Ltd. A Rule 101(2) Communication was issued inviting the Appellant to correct the Rule 99(1)(a) deficiency (the defficiency being that the address of the Appellant was missing from the notice of appeal) – which is in keeping with G1/12 – but AGCO SA failed to respond within the two-month deadline. AGCO SA requested further processing, but failed to demonstrate all due care, and so the request failed, and the appeal was found inadmissible.

      So it seems the opportunity to correct under R101(2) was given, but was missed.

      There’s no mention of Rule 139 in there, so I assume there was no attempt to correct the address under that – I suppose that the address on the letter head was perhaps not a correctable ‘mistake’, since it was always meant to be the address of AGCO Ltd…

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