A few days ago, the EPO Boards of Appeal issued the written reasons for decision T 1063/18 of 5 December 2018 by Board of Appeal 3304. This confirms what we already knew from the statement issued by the EPO on 7 December 2018 – that Rule 28(2) EPC is invalid.
Further, since it conflicts with Article 53(b) EPC as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal – decisions made before the rule was even thought of – it must always have been invalid. Thus, every decision of the EPO which depends on Rule 28(2) is also invalid. And, as I observed before the rule was “made” (one cannot of course make an invalid law, but you will understand what I mean), all the pending cases which were stayed even before it was made were wrongly stayed. Actually, not only were the stays in those cases legally invalid because there was no legal authority to stay them, but also the reason they were stayed – the subsequent introduction of Rule 28(2) – has also been shown to be invalid. If, which I suppose is also impossible, one could have degrees of invalidity, then the rule itself is invalid, decisions made on the rule are also invalid, and the stays imposed before the rule was made are now doubly invalid.
The question which now arises is, what will the EPO do about all those cases? I rather suspect that, unless the parties affected make themselves heard, the EPO will be more concerned to try and reinstate the rule in some other form – though the only alternative is an amendment to Article 53(b) itself which would be difficult, since it would require a diplomatic conference. It might also be contrary to EU law as explained by Mike Snodin (thus moving from one form of invalidity to another). But even if valid and unless legislated with retroactive effect (which would not be a wise step in all the circumstances), even that would not change the status of the cases already tainted by invalidity.
Of course, parties to cases which are still pending can and should write to the examining division requesting that objections based on the invalid rule are withdrawn. But both they and applicants who have suffered stays and refusals to grant in cases now closed have an even greater cause to feel aggrieved, not least because the likely invalidity was (or should have been) fully clear to the EPO both when it decided to stay cases and when it made the invalid rule. While Mike Snodin’s article already mentioned suggests they may have a claim against their own governments, it seems they also have a claim against the EPO under Article 9(2) EPC which provides
“The non-contractual liability of the [European Patent] Organisation in respect of any damage caused by it or by the employees of the EPO in the performance of their duties shall be governed by the law of the Federal Republic of Germany”.
Depending on the provisions of German law, both the Organisation and some of its employees could be liable – the Organisation since it was its Administrative Council which made the invalid rule and its employees which presented it to the Council. Which employees? Well, that would require some consideration but wouldn’t one normally start at the top and work down? In any event, affected parties should perhaps be consulting their German lawyers.