AS TO THE ADMISSIBILITY OF

Application No. 38817/97

by LENZING AG

against the United Kingdom

The European Commission of Human Rights (First Chamber) sitting in private on 9 September 1998, the following members being present:

MM M.P. PELLONPÄÄ, President

N. BRATZA

E. BUSUTTIL

A. WEITZEL

C.L. ROZAKIS

Mrs J. LIDDY

MM L. LOUCAIDES

B. MARXER

B. CONFORTI

I. BÉKÉS

G. RESS

A. PERENIČ

C. BÃŽRSAN

K. HERNDL

M. VILA AMIGÓ

Mrs M. HION

Mr R. NICOLINI

Mrs M.F. BUQUICCHIO, Secretary to the Chamber

Having regard to Article 25 of the Convention for the Protection of Human Rights and Fundamental Freedoms;

Having regard to the application introduced on 5 June 1997 by LENZING AG against the United Kingdom and registered on 28 November 1997 under file No. 38817/97;

Having regard to the report provided for in Rule 47 of the Rules of Procedure of the Commission;

Having deliberated;

Decides as follows:

THE FACTS

The applicant company is an Austrian company with its seat in Lenzing , Austria.  It is represented before the Commission by Clifford Chance, solicitors in London.  The facts of the application, as submitted by the applicant company's representatives, may be summarised as follows.

A. The particular circumstances of the case

On 7 August 1989, the applicant company applied to the European Patent Office ("EPO") for a patent for its process for making cotton-like fabric from wood.  The patent was granted on 16 December 1992 and designated as EP(UK) No. 356,419 in the United Kingdom.  Opposition proceedings were entered in the EPO by Courtaulds plc and Akzo Faser AG within the 9 month time period provided for by the European Patent Convention ("EPC").  Such opposition proceedings were rejected on 4 July 1994 and the two opponent companies appealed to the Board of Appeal of the EPO, together with another Courtaulds subsidiary which was permitted to intervene in the proceedings.  The Board of Appeal appointed a rapporteur who issued his comments on the appeal to the parties on 26 January 1996, asking for submissions for the oral proceedings to be filed with the EPO one month beforehand.  The appeal hearing was held on 3 May 1996 in Munich.  The Board of Appeal orally allowed the appeal and revoked the patent on that date.  The reasons for its decision were issued to the applicant company on 12 July 1996.  The fact of revocation was recorded on the register of European Patents kept by the EPO, and in the United Kingdom the Comptroller-General of Patents amended the United Kingdom register of patents to show that the applicant company's patent had been revoked.

In its written decision, the Board of Appeal revoked the patent because it lacked an inventive step.  The applicant company complained that the Board of Appeal's decision had been based on an issue which it had not addressed at the hearing and asked the EPO to re-open the proceedings.  However, the EPO declared itself functus officio.

Meanwhile, in the United Kingdom, Courtaulds had petitioned the Patents Court to revoke the applicant company's patent.  The applicant company responded by issuing proceedings for the infringement of its then subsisting patent against Courtaulds .  Following the Board of Appeal's decision, the applicant company issued another set of proceedings in the United Kingdom courts, seeking judicial review of the decision of the Board of Appeal and of the decision of the Comptroller-General of Patents to mark the United Kingdom register indicating that the patent had been revoked and requested that the revocation be quashed and the register be rectified to show that the patent still subsisted because, the applicant company alleged, the decision of the Board of Appeal was not made in accordance with the EPC.  These proceedings were rejected by Mr Justice Jacob on 20 December 1996.  He dismissed the applications for judicial review and rectification of the register, together with the pending patent proceedings.  In the proceedings, Courtaulds had argued that:

"the activities of the EPO are not governed by English law and are not justiciable in English courts.  It is not open to the English courts to consider whether or not the decision was 'in excess' of the powers of the [Board of Appeal]. ... all that Parliament has required in the [United Kingdom Patent Act] is proof that the EPO has, acting in purported exercise of its powers under the EPC, (of which it, and not national courts are the judge) revoked a European Patent.  Once that is shown, then our law automatically treats the European Patent (and with it the European Patent (UK)) as revoked.  The Comptroller in making the entry in the register is acting in a purely administrative capacity, just recording what has been done."

The judge agreed with Courtaulds ' arguments and found that:

"This country has agreed with the other States members of the EPC that the final arbiter of revocation under the new legal system is to be the Board of Appeal of the EPO."

An application for leave to appeal to the Court of Appeal was later withdrawn.

B. Relevant law and procedure of the EPO

Article 21 of the EPC provides:

"(1) The Boards of Appeal shall be responsible for the examination of appeals from the decisions of the ... Opposition Divisions ...

(4) For appeals from a decision of an Opposition Division, a Board of Appeal shall consist of:

(a) two technically qualified members and one legally qualified member, when the decision was taken by an Opposition Division consisting of three members;

three technically qualified members and two legally qualified members, when the decision was taken by an Opposition Division consisting of four members or when the Board of Appeal considers that the nature of the appeal so requires."

Article 23 of the EPC provides:

"(1) The members of the Enlarged Board of Appeal and of the Boards of Appeal shall be appointed for a term of five years and may not be removed from office during this term, except if there are serious grounds for such removal and if the Administrative Council, on a proposal from the Enlarged Board of Appeal, takes a decision to this effect.

(2) The members of the Boards may not be members of the Receiving Section, Examining Divisions, Opposition Divisions or of the Legal Division.

(3) In their decisions, the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention.

(4) The Rules of Procedure of the Boards of Appeal and the Enlarged Board of Appeal shall be adopted in accordance with the provisions of the Implementing Regulations.  They shall be subject to the approval of the Administrative Council."

Article 24 provides:

"(1) Members of the Boards of Appeal or of the Enlarged Board of Appeal may not take part in any appeal if they have a personal interest therein, if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.

(2) If, for one of the reasons mentioned in paragraph 1, or for any other reason, a member of a Board of Appeal or of the Enlarged Board of Appeal considers that he should not take part in any appeal, he shall inform the Board accordingly.

(3) Members of a Board of Appeal or of the Enlarged Board of Appeal may be objected to by any party for one of the reasons mentioned in paragraph 1, or if suspected of partiality.  An objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step.  No objection may be based upon the nationality of members.

(4) The Boards of Appeal and the Enlarged Board of Appeal shall decide as to the action to be taken in the cases specified in paragraphs 2 and 3 without the participation of the member concerned.  For the purposes of taking this decision the member objected to shall be replaced by his alternate."

Article 110(2) of the EPC relates to the decision-making parameters of the Board of Appeal:

"In the examination of the appeal, which shall be conducted in accordance with the provisions of the Implementing Regulations, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from another party or issued by itself."

Article 113(1) of the EPC provides:

"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

After a European patent is granted, any party may, within nine months, oppose such grant.  The Opposition is heard by an Opposition Division of the EPO, comprised of three members of that Division.  There is an automatic right of appeal from a decision of the Opposition Division to a Board of Appeal.  The decision of the Board of Appeal is final.  Questions of law may be referred to an Enlarged Board of Appeal of the EPO but only by a Board of Appeal.  The Enlarged Board of Appeal has no jurisdiction to reverse a decision of a Board of Appeal.  Its function is purely to advise other bodies of the EPO on issues of law referred to it.

The terms of the EPC were enacted into primary legislation in the United Kingdom by virtue of the Patents Act 1977 (as amended).

Section 74(4)A of the Patents Act provides:

"Where a European patent (UK) is revoked in accordance with the European Patent Convention, the patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act."

Section 77 of the Patents Act provides:

"(1) Subject to the provisions of this Act, a European Patent (UK) shall...be treated for the purposes of Parts I and III of this Act [which relate to patents granted by the United Kingdom Patent Office] as if it were a patent under this Act granted in pursuance of an application made under this Act...

(4A) where a European Patent(UK) is revoked in accordance with the European Patent Convention, the Patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act".

COMPLAINTS

The applicant company alleges a violation of Article 1 of Protocol No. 1 of the Convention, complaining that the operation of the Patents Act 1977 is such that the applicant company has been deprived of the peaceful enjoyment of its possession, that is the patent.  The applicant company also complains that the effect of the Patents Act 1977 is that its infringement proceedings against Courtaulds were dismissed and that the effect of such legislation did not achieve a fair balance between the general interest and the applicant company's rights.

The applicant company also alleges a violation of Article 6 para. 1 of the Convention in that it has been deprived of access to court in order to vindicate its claims to the peaceful enjoyment of its possessions.

THE LAW

1. The applicant company complains that it has been denied access to court contrary to the provisions of Article 6 para. 1 of the Convention.

Article 6 para. 1 of the Convention provides, so far as relevant, as follows:

"In the determination of his civil rights and obligations or of any criminal charge against him, everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal established by law."

The applicant company complains that the Patents Act provides that if a patent is revoked by the EPO, then it is also revoked in the United Kingdom.  The statute therefore operates to interfere with the applicant company's alleged possessions by giving effect in the United Kingdom to the EPO revocation.  The applicant company complains that it is thereby deprived of a substantive basis in the domestic courts for claiming that its rights have been interfered with.

In so far as the applicant company's complaint is about the internal procedure of the EPO and whether or not the guarantees of Article 6 of the Convention attach to the proceedings of the Board of Appeal of the EPO, the Commission notes that this complaint is against the EPO and not the United Kingdom Government.  The Commission must first consider the question whether it is competent to examine complaints about the decisions of other European institutions, whose membership is in whole or in part composed of High Contracting Parties to the Convention.  In this connection, it recalls its case-law according to which it is not competent ratione personae to examine proceedings before or decisions of organs of the European Communities (see No. 13258/87, Dec. 9.2.90, D.R. 64, pp. 138, 144) or of the European Patent Office (see No. 21090/92, Dec. 10.1.94, D.R. 76-A, p. 125 and No. 27410/95, Dec. 12.4.96, (unpublished)) as they are not parties to the European Convention on Human Rights.  The Commission cannot therefore consider a complaint under Article 6 of the Convention against the EPO in respect of its internal proceedings.

The Commission, however, will also consider the complaint under Article 6 of the Convention in respect of the United Kingdom proceedings before the High Court.  The Commission first notes that there is some doubt as to whether the applicant company has complied with the requirement on exhaustion of domestic remedies contained in Article 26 of the Convention, as it did not pursue its application for judicial review before the Court of Appeal.  However, the Commission is not required to determine this issue, as even assuming that domestic remedies have been exhausted, the complaint is manifestly ill-founded for the following reasons.

The Commission recalls that Article 6 para. 1 of the Convention applies only to disputes (" contestations ") over rights and obligations which can be said, at least on arguable grounds, to be recognised under domestic law.  It does not in itself guarantee any particular content for "rights and obligations" in the substantive law of the Contracting States (cf. Eur. Court HR, James and Others v. the United Kingdom judgment of 21 February 1986, Series A no. 98, p. 46, para. 81; Lithgow and Others v. the United Kingdom judgment of 8 July 1986, Series A no. 102, p. 70, para. 192).  It is also established case-law that Article 6 para. 1 guarantees to everyone who claims that an interference with his "civil rights" is unlawful, the right to submit that claim to a tribunal satisfying the requirements of that provision (Eur. Court HR, Le Compte , Van Leuven and De Meyere v. Belgium judgment of 23 June 1981, Series A no. 43, p. 20, para. 44).

The applicant company pursued its claim for ownership of a patent in the United Kingdom before the High Court but was prevented from having a hearing on the substantive merits of its case by an immunity protecting the EPO from the scrutiny of the national courts of the contracting parties to the EPO.

The Commission recalls that the Convention organs have developed case-law in which the question of the limitation on substantive rights has been considered in the context of access to court (see, for example, the discussion of the judicial limitations on the substantive law of negligence in the United Kingdom in Osman v. the United Kingdom, No. 23452/94, Comm. Report 1.7.97, and the case-law referred to there).

The Commission has recently found (No. 37650/97, Dec. 21.5.98, to be published) that it was not necessary to decide whether or not the immunity of British Airways from a negligence suit was an immunity which delimited the content of the substantive law or whether it acted as a limitation on the right to bring proceedings.  It referred to the case-law outlined in the case of Fayed (Eur. Court HR, Fayed v. the United Kingdom judgment of 21 September 1994, Series A no. 294-B) whereby limitations on the right of access to court are permitted provided that they pursue a legitimate aim and there is a reasonable relationship of proportionality between the means employed and the aim sought to be achieved (p. 49, para. 65, with further references).

In addition, the Commission recalls that Article 6 para. 1 applies where the subject-matter of an action is "pecuniary" in nature and is founded on an alleged infringement of rights which are likewise pecuniary (cf. Eur. Court HR, Editions Périscope v. France judgment of 26 March 1992, Series A no. 234-B, p. 66, para. 40).

The Commission notes that if the applicant company had been able to establish a substantive claim in the United Kingdom courts, its patent claim would have been of a potentially important pecuniary nature in securing a commercial advantage over competitors.  Given the pecuniary nature of the alleged infringement and the case-law (see above) on whether or not a limitation on access to court raises a substantive or a procedural issue, the Commission finds that Article 6 of the Convention applies to the High Court proceedings.  The relevant question for consideration in this connection is therefore whether the refusal of the United Kingdom courts to consider the merits of the applicant company's application for judicial review is compatible with Article 6 para. 1 of the Convention.  The refusal was due to the High Court's interpretation of the EPC and the jurisdiction of the United Kingdom courts to scrutinise the acts of the EPO.  The judge found that he was unable to review the internal procedure of the EPO because the United Kingdom had delegated its powers in respect of patents to the EPO.  The High Court's refusal to review the applicant company's application for judicial review, which was a limitation on the applicant company's right of access to court, will be compatible with Article 6 para. 1 of the Convention only if the limitation pursues a legitimate aim and there is a reasonable relationship of proportionality between the means employed and the aim sought to be achieved.

As to the aim being pursued by the limitation on access to court in the present case, the Commission observes that "if a State contracts treaty obligations and subsequently concludes another international agreement which disables it from performing its obligations under the first treaty it will be answerable for any resulting breach of its obligations under the earlier treaty" (cf. No. 235/56, Dec. 10.6.58, Yearbook 2, pp. 256, 300).

However, the transfer of powers to an international organisation is compatible with the Convention provided that within that organisation fundamental rights will receive an equivalent protection (cf. Waite and Kennedy v. Germany, No. 26083/94, Comm. Report 2.12.97 and Beer and Regan v. Germany, No. 28934/95, Comm. Report 2.12.97).

The EPC is an international convention aimed at unifying the law of patents so that an individual can apply to a central European office rather than making separate applications in each jurisdiction.  It provides certainty for the patent-holders in that they have universal protection in each of the contracting jurisdictions to the EPC, as well as certainty for third parties who can rely on the register as being final and conclusive.  The Commission has previously found that the rationale for immunities accorded to international organisations , such as the European Space Agency, is to contribute to their proper functioning without constant unilateral interference from individual governments and that this underlying aim pursues a legitimate aim (cf. Waite and Kennedy v. Germany and Beer and Regan v. Germany, op. cit.).  The position is similar in the present case, save that the advantages to commercial organisations which are involved with patents at a  European level are particularly clear in the present case.  The Commission considers that the aim of the limitation on access to court in the present case - to ensure the effectiveness of a centralised patent applications office - is legitimate.

As to the proportionality of the means employed in ensuring this aim, the Commission notes that the EPC contains detailed provisions on substantive patent law covering patentability , the persons entitled to apply, the term, the rights and equivalence of a European patent and patent applications, the application as an item of property, the procedure for grants, opposition procedures, etc.  In addition, as the High Court in the United Kingdom found, the Boards of Appeal of the EPO provide a means of judicial review.  Thus, Article 21 provides for an appeals procedure which includes the Board of Appeal and an Enlarged Board of Appeal.  The members of these Boards are independent of the parties and of the decision of the division appealed from, have tenure and there must always be one legally qualified member of the Board.  The Boards have powers to obtain sworn evidence and must give written decisions containing reasons.  Further, the members of the Boards are not subject to any instructions from the President or anyone else in their work (Article 23).  These procedures set up a form of "equivalent protection" within the meaning of the Convention case-law (see No. 13258/87 and No. 21090/92, both cited above).

The Commission also notes that in deciding not to register patents separately in a number of European countries, but rather to avail itself of the EPO registration scheme, it could be said that the applicant company chose EPC provisions, and thereby accepted the limitation on access to court in the various domestic systems which that choice brought with it. 

In any event, as to the applicant company's complaint that the Board of Appeal decided on an issue, that of inventive step, which the applicant company claims it did not have the opportunity to argue, the Commission notes the detailed written reasoning of the Board of Appeal and the fact that both parties were able to present written submissions well in advance of the hearing and had the opportunity to comment at the oral hearing on the issues raised by Courtaulds and the rapporteur .  The reasoning of the Board of Appeal appears to be thorough and deals with the question of inventiveness, together with other issues considered at the hearing.             

Finally, the Commission notes that the applicant company was able to, and did, put its claims to the civil courts.  Those claims were dealt with at considerable length by the domestic courts.  The applicant company makes no complaint whatever about, for example, the fairness of the proceedings, and it is apparent from the judgment in the case that the company was given extensive opportunity to put its cases to the courts.  The fact that the courts found that the claims fell outside the scope of the substantive law is not relevant in the context of Article 6, which guarantees procedural rights in the determination of civil rights (or whether a case falls outside the scope of a civil right), and not the civil rights themselves.

The Commission considers that, given the procedural guarantees available before the EPO, it cannot be said that the limitation on the applicant company's access to court in the United Kingdom was disproportionate to the aim of ensuring an effective European system of registration of patents.

It follows that this part of the application is manifestly ill-founded within the meaning of Article 27 para. 2 of the Convention.

2. The applicant company also complains that it has been deprived of its right to a patent contrary to Article 1 of Protocol No. 1 to the Convention.

Article 1 of Protocol No. 1 provides as follows:

"Every natural or legal person is entitled to the peaceful enjoyment of his possessions.  No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.

The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties."

Although the applicant company has framed its complaint against the United Kingdom Government, the real interference with the applicant company's possession, its patent, was by the EPO.  The Commission noted above in relation to the complaint under Article 6 of the Convention that it is not competent ratione personae to examine proceedings before or decisions of organs of the European Communities (see No. 13258/87, Dec. 9.2.90, D.R. 64, pp. 138, 144) or of the European Patent Office (see No. 21090/92, Dec. 10.1.94, D.R. 76-A, p. 125 and No. 27410/95, Dec. 12.4.96, (unpublished)) as they are not parties to the European Convention on Human Rights.  In so far as the applicant company has been deprived of its patent by the EPO, the Commission is not able to consider the complaint.

However, the applicant company pursued its complaint against the EPO in the United Kingdom courts by instituting proceedings against the Comptroller-General of Patents for rectification of the United Kingdom register of patents.  The Commission first notes that the question arises whether the applicant company has exhausted domestic remedies, as required by Article 26 or the Convention (see para. 1 above).  However, in this context, too, the Commission can leave the question open as it considers the complaint to be manifestly ill-founded for the following reasons.

A patent is a possession for the purposes of Article 1 of Protocol No. 1 (see No. 12633/87, Dec. 4.10.90, D.R. 66, p. 79).  The Commission does not however accept the applicant company's contention that the domestic proceedings deprived the applicant company of the patent.  Given the way in which the applicant company chose to protect its patent, by application to the EPO rather than by separate applications in the various jurisdictions in which it sought protection, the domestic proceedings did not deal with the existence of the patent but whether or not the applicant company could establish a claim to have the United Kingdom patent register rectified.  The possession at issue was therefore not the patent itself, but the applicant company's right to pursue a legal claim in the domestic courts.  The Commission recalls the Convention case-law according to which the "possessions" may include claims (for example, see Eur. Court HR, Pressos Compania Naviera S.A. and Others v. Belgium judgment of 20 November 1995, Series A no. 332, p. 21, para. 31).  In the present case, and assuming that the applicant company's claim is a possession within the meaning of Article 1 of Protocol No. 1, the Commission notes that the applicant company was able to pursue its claim in the courts and had a full hearing which decided on the powers of the Comptroller-General within the context of the EPC.  There was therefore no interference with the applicant company's right to have its claim heard in the domestic courts and therefore no appearance of an interference within the meaning of Article 1 of Protocol No. 1.

It follows that this part of the application is manifestly ill-founded within the meaning of Article 27 para. 2 of the Convention. 

For these reasons, the Commission, unanimously,

DECLARES THE APPLICATION INADMISSIBLE.

  M.F. BUQUICCHIO   M.P. PELLONPÄÄ

     Secretary      President

to the First Chamber of the First Chamber