EPO, Technical Board of Appeal 3.5.04, T 1473/13, decision of January 24, 2019

Reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

In the reported case, the application had been refused. In reply to an unfavorable communication preparing the oral proceedings, the applicant requested to stay the proceedings until the Federal Constitutional Court (“FCC”, in German: “Bundesverfassungsgericht“) of the Federal Republic of Germany had given a ruling on the admitted constitutional complaints against decisions of the Boards of Appeal.

The Board observes that there was no reason for the late filing of the request since any party has to consider the possibility of losing its appeal. Nevertheless, the Board admits the request under Article 13 (1) of the Rules of Procedure of the Boards of Appeal because of the general interest in the questions involved. If the Board granted a stay due to the cases pending before the FCC, and if other Boards adopted the same approach, then the administration of justice by the boards might become severely hampered and may even grind to a halt.

The Headnote of the decision reads:
“1. Discussion of a possible general principle for staying proceedings before the EPO boards of appeal beyond Rules 14 / 78 EPC and Article 112(3) EPC, together with the associated case law.

“2. The appellant has not stated a case for a stay. It has not shown, in particular, that a decision by the German Federal Constitutional Court (“Bundesverfassungsgericht“) on pending constitutional complaints (“Verfassungsbeschwerden“) against certain decisions of the Boards of Appeal and the Enlarged Board of Appeal claiming “insufficient judicial relief at the EPO against a decision of the Boards of Appeal” could possibly have an impact on unrelated proceedings that are pending before the boards, such as the present proceedings.”

Assuming in favor of the applicant a competence to stay proceedings under a general legal principle, the Board refuses the request for the reason summarized in Headnote 2.

In addition, the Board, without speculating on the outcome of the cases pending before the FCC, gives an analysis of conceivable options of how the appellant could present its case before an independent court, to be set up or already existing, if a constitutional complaint turned out to be successful.

The Board refers to the decision of the German Bundesverwaltungsgericht of 1959, ruling that the Boards of Appeal (in German: “Beschwerdesenate”) of the German Patent Office were part of the Office from an organizational point and thus not proper courts. Therefore, their decisions were held to be appealable before the Administrative Court of Munich until the German Constitution was amended and the Federal Patent Court was created in 1961.

In respect of the decisions of the Boards of Appeal of the EUIPO (formerly OHIM), the Board refers to the decision of the ECJ in case OHIM v. Bayer, Arcol II, C‑29/05 P (ECLI:EU:C:2007:162) making a distinction between the Boards of Appeal which remained departments of OHIM, and the subsequent possibility of judicial review before the General Court and the Court of Justice.

It may be added, that the General Court was even more explicit in this respect in its decision Procter & Gamble v. OHIM, Soap bar shape, T-63/01 (ECLI:EU:T:317), stating at pt. 51 that the Boards of Appeal cannot be considered as a court, recently cited and confirmed in Alcohol Countermeasure Systems v. EUIPO, T 638-15 (ECLI:EU:T:2017:229), pt. 16.

Specifically for Germany, the Board mentions as a more practicable alternative, i.e. to make it possible to convert a patent application refused by a board of appeal into a German patent application. So far Germany only provides for branching off a utility model from a European patent application in the same way as from a national patent application.

If conversion into a national patent application were made possible in accordance with Article 135 (1) b) EPC, the German part of a refused European patent application could be converted into a German patent application and be subject to full examination by the German Patent and Trademark Office. Decisions of that office would be subject to review by the German courts. Enabling conversion might be considered a practical if not fully equivalent alternative to making review of a European patent application possible for Germany only, or an additional option.

A copy of the decision (in English) can be read here.