RAMBUS INC. v. GERMANY
Inadmissible
Isabelle Berro-Lefèvre;Karel Jungwiert;Mark Villiger;Peer Lorenzen;Rait Maruste;Renate Jaeger;Zdravka Kalaydjieva
The applicant company, Rambus Inc., is a company incorporated in the United States of America. It was represented before the Court by Mr V. Henke, a lawyer practising in Hamburg. The applicant was the proprietor of a European patent in the area of chip technology. The patent was contested in an opposition proceeding before the European Patent Office (“EPO”). At first instance, on 10 September 2002 the Opposition Division of the EPO maintained the patent in an amended (limited) form, that is, the proprietor added further features to the granted claims of the patent in order to meet the requirements of the European Patent Convention. The decision was appealed against by all parties to the proceedings. The applicant requested that the patent be upheld unamended, or, by way of auxiliary request, that it be maintained in accordance with one of six sets of amended claims filed with the grounds. On 14 November 2003, the Board of Appeal of the EPO summoned the parties to oral proceedings to commence on 10 February 2004. The Board of Appeal indicated that it “may disregard evidence which is not submitted in good time prior to the oral proceedings.” It added that the same applied to amendments to the patent documents, which “should be filed as early as possible (at least one month before the date set for the oral proceedings).” On 9 January 2004, one day before the expiry of the time-limit, the applicant filed 19 new auxiliary requests. In the course of the oral proceedings the applicant withdrew its previous main request and all but five auxiliary requests. It requested that the decision under appeal be set aside and that the patent be maintained in its amended form on the basis of the five remaining auxiliary requests. By letter dated 12 January 2004 one of the opponents filed new prior art documents. The opponents requested that the decision under appeal be set aside and the patent revoked. As to the procedural issues, the opponents further argued that those of the nineteen requests filed on 9 January 2004 which opened up new issues were inadmissible, as they had not been lodged in due time. The applicant argued that the requests were admissible since they had been presented within the time-limit set by the Board of Appeal in the summons to oral proceedings. At the end of the oral proceedings, on 12 February 2004, the Board of Appeal quashed the decision under appeal and revoked the patent. It rejected three of the applicant’s (auxiliary) requests as inadmissible. Referring to two previous decisions, not published in the Official Journal of the EPO (“OJ EPO”), and to Article 11 § 6 of the Rules of Procedure of the Boards of Appeal (see relevant law below), the Board considered that requests filed at a point in time just before the minimum period set by the board in a summons to oral proceedings were to be regarded as belated if they raised issues which would require a further written phase in order to be properly dealt with. The Board further noted that, regardless of whether the opponents had been familiar with all the technical issues, they had not accepted that the invention according to the auxiliary requests was patentable. Thus, the divergent features would still have required extensive discussions. The Board also rejected the applicant’s two remaining requests. In its reasoning it also took into account the documents filed by the opponents on 12 January 2004. With regard to the admissibility of these documents the Board found that their slight lateness had been of no importance and admitted them into the proceedings. It argued that it could always exercise certain discretion to admit documents and that there had been sufficient time left for all parties to study the documents. The written version of the decision was served on the applicant’s representative on 14 May 2004. On 9 June 2004 the Federal Constitutional Court refused to admit the applicant’s constitutional complaint for adjudication. Referring to its caselaw establishing the principle that it would refrain from exercising its jurisdiction as long as the protection received within the framework of the European Patent Organisation fundamental rights was in general equivalent to the standard of the German Constitution, it held that the applicant had failed to sufficiently demonstrate that the fundamental rights protection within the European Patent Convention did not meet this standard. The European Patent Organisation is an intergovernmental organisation that provides for an autonomous protection mechanism for individual inventors and companies seeking uniform patent protection in up to 38 European countries. When the events at issue occurred, the European Patent Convention 1973 was in force. A revised version of the European Patent Convention entered into force on 13 December 2007. Article 2 of the European Patent Convention 1973 reads as follows: “(1) Patents granted by virtue of this Convention shall be called European patents. (2) The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless otherwise provided in this Convention.” Article 64 of the European Patent Convention 1973 provides: “(1) A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. (2) ... (3) Any infringement of a European patent shall be dealt with by national law.” Article 68 of the European Patent Convention 1973 provides: “The European patent application and the resulting patent shall be deemed not to have had, as from the outset, the effects specified in Articles 64 and 67, to the extent that the patent has been revoked in opposition proceedings.” The European Patent Convention leaves it open to the Member States to provide for their own national patent protection system. Germany provides for such a protection mechanism with the Patent Act (Patentgesetz) and the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt). Neither the European Patent Convention nor the German Patent Act exclude a patentee from applying under the other protection mechanism. Article 139 of the European Patent Convention 1973 provides: “(1) In any designated Contracting State a European patent application and a European patent shall have with regard to a national patent application and a national patent the same prior right effect as a national patent application and a national patent. (2) A national patent application and a national patent in a Contracting State shall have with regard to a European patent in which that Contracting State is designated the same prior right effect as they have with regard to a national patent. (3) Any Contracting State may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications or patents.” With regard to appeals to the Enlarged Board of Appeal, Article 112 § 1 of the European Patent Convention 1973 provides as follows: “(1) In order to ensure uniform application of the law, or if an important point of law arises: (a) the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision; (b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.” Article 11 § 6 of the Rules of Procedure of the Boards of Appeal (OJ EPO 2003, 89) in force at the relevant time provides: “(6) The Board shall ensure that each case is ready for decision at the conclusion of the oral proceedings, unless there are special reasons to the contrary. Before the oral proceedings are closed, the decision may be announced orally by the Chairman.”