No. of citations: 131
J 10/07 was concerned with the question of whether the Rules of the EPC1973 or the Rules of the revised EPC2000 were applicable in cases which took place in the transitional phase of the entry into force of the EPC2000. (The EPC2000 entered into force on 13 December 2007.) Nowadays, more than 10 years after the entry into force of the EPC2000, J 10/07 has lost most of its relevance. (See graph on top right.) Nevertheless, the case underlying the decision and its conclusions will briefly be summarised below.
In the underlying case, the applicant filed (on 9 October 2004) an application claiming priority of an application filed 16 October 2003. No drawings, however, were filed with the application, although the "receipt of documents" form 1001.6 mentioned 6 drawing sheets. The applicant apparently forgot to enclose the drawings in the filing documents.
Under the EPC1973, which was in force at the time of filing the application, an applicant who failed to file the drawings together with the remaining application had two choices: He could file the missing drawings and request that the application was re-dated to the date on which the drawings were received by the EPO, alternatively all references to the drawings were deemed to be deleted (R. 43 EPC1973).
Under the EPC2000, however, the applicant is given a third choice, namely - if a priority is claimed - filing the missing drawings and maintaining the original filing date, if the late-filed drawings are completely contained in the priority application (R. 56 EPC).
In the case at hand the applicant filed the missing drawings on 11 November 2004, i.e., after expiry of the priority year.
The EPO then issued a "loss of rights" communication under Rule 69 EPC1973, stating that the application was re-dated to 11 November 2004 and that - as a consequence of the re-dating - the claimed priority of 16 October 2003 was invalid.
The applicant requested am appealable decision and - on 24 November 2006 - appealed against that decision. At the end of the appeal proceedings the sole and Main Request of the appellant was to acknowledge the original filing date (9 October 2004) as the filing date, and to deem all references to the missing drawings deleted. He argued that his late filing of the missing drawings was misinterpreted by the EPO as a request to re-date the application.
Oral proceedings before the Legal Board of Appeal took place on 8 April 2008, i.e., after entry into force of the EPC2000. Under these circumstances, the Board considered it appropriate to first determine, whether the Articles and Rules of the EPC1973 or the Articles and Rules of the EPC2000 were applicable.
They observed that, generally, according to Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO, Special edition 1/2007, page 196) the revised version of the EPC
"... shall apply to all European patent applications filed after its entry into force, as well as to all patents granted in respect of such applications. It shall not apply to European patents already granted at the time of its entry into force, or to European patent applications pending at that time, unless otherwise decided by the Administrative Council of the European Patent Organisation." (ibid.)The decision of the Administrative Council (AC) regarding this matter was taken 28 June 2001. It is also published in the Special edition 1/2007 of the Official Journal (on page 197). This decision holds, i.a., that Articles 14(3) to (6), 51, 52, 53, 54(3) and (4), 61, 67, 68 and 69, the Protocol on the Interpretation of Article 69, and Articles 70, 86, 88, 90, 92, 93, 94, 97, 98, 106, 108, 110, 115, 117, 119, 120, 123, 124, 127, 128, 129, 133, 135, 137 and 141 of the revised EPC shall (exceptionally) apply to European patent applications pending at the time of their entry into force and to European patents already granted at that time.
Regarding the applicability of the Rules of the EPC (which are not mentioned in the above decision of the AC), the Board in J 10/07 considered that it would be logical, and indeed necessary, that Rules relating to the above Articles (in the sense of "implementing" them) should also fall under the transitional provisions made by the AC decision of 28 June 2001. Otherwise, irresoluble contradictions and legal discrepancies would arise between the applicable Articles of the EPC 1973 and the applicable provisions of the Implementing Regulations to the EPC 2000, which could have been the legislator's intention.
The relevant Rules 43 EPC1973 and 56 EPC2000 were "implementing provisions" of Art. 80 EPC ("Date of filing"). Since Art. 80 was not mentioned in the AC decision of 28 June 2001 as one of the Articles to which exceptionally EPC2000 applies, it was concluded that the applicable Rule in the present case was Rule 43 EPC1973.
Under the specific circumstances of the case, and in application of Rule 43 EPC1973, the Board decided that the appellant-applicant's request to acknowledge the original filing date, and to deem all references to the missing drawings deleted, allowable
---
Headnote:
On the question of the applicability of the EPC 1973 or EPC 2000 in accordance with the transitional provisions of the EPC 2000 (see Points 1, 3, 6 and 7 of the Reasons).The full text of the decision can be found here.
No comments:
Post a Comment