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CHAPTER XII THE REQUEST FROM A NATIONAL COURT FOR A TECHNICAL OPINION CONCERNING A EUROPEAN PATENT 1. General 1.1 "At the request of the competent national court trying an infringement or revocation action, the EPO shall be obliged, against payment of an appropriate fee, to give a technical opinion concerning the European patent which is the subject of the action. The Examining Divisions shall be responsible for the issue of such opinions." »»Art. 25 Only requests from a national court in a Contracting State will be accepted by the EPO. It is not however up to the EPO to check whether the requesting court is "competent" to deal with the action or not. The Examining Division, however, should check whether a European patent is the "subject of the action". 1.2 The Examining Division responsible for the technical opinion should give the parties an opportunity to submit arguments in writing if the court so permits. However, the parties have no right to be heard before the EPO. Nevertheless, where the Examining Division considers it necessary, it may invite the parties, via the court and provided that the court so permits, either to be heard before the Examining Division or to submit supplementary observations on specific points identified by the Examining Division. If the parties are heard, such a hearing is not considered to constitute oral proceedings within the meaning of Art. 116. 1.3 The technical opinion is not a "decision" of the EPO. The parties to the national proceedings therefore have no right of appeal before the EPO against an "unfavorable" opinion. 2. Scope of the technical opinion 2.1 The Examining Division is obliged to give a "technical opinion" upon request. This means that the Division is bound to give an opinion only insofar as the questions put are of a technical character. However, the Examining Division should not be too restrictive in this regard but should attempt to assist the national court as much as is reasonably possible, while remembering that the actual decision on infringement or revocation is exclusively a matter for the national court. 2.2 Generally speaking, the Examining Division should attempt to give a technical opinion on any question which is similar to those normally dealt with in European substantive examination work, even when the question has a legal, as well as a technical, aspect. On the other hand, the Examining Division should decline to make any specific statement on whether a patent is valid or on whether it is infringed. It should also not give any opinion on the extent of protection (Art. 69 and the accompanying Protocol). 2.3 It is to be expected that a request from a national court will be clearly and precisely formulated, so that the Examining Division will be in no doubt as to the questions on which the court wishes to have an opinion. Since the court is responsible for deciding the issues of law involved in the questions and since most questions include a mixture of legal and technical aspects, the court is expected where possible to separate clearly the legal aspects from the technical aspects upon which it seeks the opinion of the EPO. 3. Composition and duties of the Examining Division 3.1 The composition of the Examining Division to which the request is referred shall be as defined in Art. 18(2). This means that the Division shall include three technical examiners; normally a legally qualified examiner shall also be included. The main responsibility for dealing with the request up to the time of formulating the opinion shall be entrusted to one technical examiner, hereinafter referred to as the "primary examiner". 3.2 In order to guarantee that the opinion given is not influenced by earlier proceedings within the EPO on the application/patent in question, examiners who have taken part in such earlier proceedings as members of an Examining or Opposition Division should be excluded from the Examining Division set up under Art. 25. Where this is not practicable, the national court and the parties should be informed of the proposed members of the Examining Division under Art. 25 and of which among these members participated in European examination or opposition proceedings on the case. The court should be asked to state whether, in the circumstances, the request for a technical opinion is maintained. 3.3 The primary examiner will act on behalf of the Examining Division and he will normally be responsible for issuing communications to the court. The primary examiner should also draft the written opinion and should circulate the draft to the other members of the Examining Division for consideration. If any changes are proposed in the draft and there are differences of view on such changes, the Chairman should arrange a meeting to resolve the matter. The final opinion should be signed by all members of the Division. 4. Language to be used 4.1 In principle the language to be used should be the language of the proceedings of the European patent; however, if the court so requests, another official language of the EPO may be used. At least the request itself, any submissions from the parties, and any amendments to the patent should be in that language or translated into that language. The opinion should also be produced in that language. However, where appropriate, the Examining Division should pay regard to the provisions of Art. 70(2) to (4). 4.2 Regarding documents to be used as evidence, the provisions of Rule 1(3) shall apply (see A-VIII, 2.2). 4.3 The court or the parties shall be responsible for providing any translations which may be required to satisfy the above conditions. 5. Procedure It is envisaged that the procedure would normally involve the following stages. 5.1 Formalities check The formalities officer will check whether the fee has been paid and whether there are any obvious deficiencies as to the language requirements. If there are any deficiencies in these respects, the formalities officer will write to the national court informing it that no substantive work on the opinion will begin until the deficiencies have been remedied. However no time limit can be imposed on the court. »»Art. 2, No. 20, RFees If the file indicates that the court permits the parties to submit written arguments to the EPO and such arguments are not already on the file, the formalities officer will write via the court to the parties giving them a time limit (say 2 months) for submitting such arguments. 5.2 Preliminary examination When the formal requirements have been met, and, where appropriate, the arguments of the parties are on file, the case will be referred to the Directorate responsible for the technical field to the patent in order that the Examining Division may be established. Assuming that an Examining Division consisting entirely of new members can be formed or, where this is not possible, that the court maintains its request for a technical opinion (see XII, 3.2), the primary examiner will make a preliminary examination to determine whether: (i) The questions put by the national court are such as the Examining Division is competent to answer, at least in part. (ii) The papers filed are sufficiently complete and the necessary translations have also been filed. If there are any deficiencies in these respects, the primary examiner will write to the national court accordingly. 5.3 Withdrawal of the request If the request for a technical opinion is withdrawn before the Examining Division starts any substantive work on the opinion, 75% of the fee will be refunded. »»Art. 10a, RFees 5.4 Establishment and issue of the technical opinion After any deficiencies as referred to in 5.1 or 5.2 above have been met, the Examining Division should establish the technical opinion as soon as possible. The opinion should be sent to the national court. Any papers received from the court which belong to the national proceedings should be sent back with the opinion. 5.5 Appearance before the national court If after the opinion is issued the national court asks the Examining Division to appear before it, the court should be informed that the Office is willing to send one member of the Division provided that his costs are paid and on the understanding that this member will be required only to answer questions on the technical opinion given, and will not be required to give an opinion on additional matters unless notice in writing of these additional matters is given to the Examining Division at least one month before the appearance before the court.

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