T 0089/90 (Toroidal transformer) 27-11-1990

I. The respondents are proprietors of European patent No. 0 063 636 (application No. 81 105 435.2).

II. Siemens AG and Asea Brown Boveri AG opposed the grant of this patent on the grounds that its subject-matter lacked novelty and inventive step.

III. During oral proceedings on 26 January 1989 the Opposition Division indicated its intention of maintaining the patent on the basis of amended Claims 1-3.

IV. In an official communication under Rule 58(4) EPC the Opposition Division informed the parties of the text in which it intended to maintain the European patent.

V. In their submission dated 13 March 1989 the opponents Siemens expressed no objections to this text, while at the same time making clear their view that, in the light of the state of the art described in the citations, the patent should be revoked on the grounds of lack of novelty or "level of invention".

VI. In its interlocutory decision of 28 November 1989 pursuant to Article 106(3) EPC, the Opposition Division held the arguments put forward by Siemens in their submission of 13 March 1989 to be a repetition of their request for revocation. Citing its reasons it stated that, in view of the amendments made by the patent proprietors during the opposition proceedings, the patent and the invention to which it related met the requirements of the EPC. The decision allowed a separate appeal (Article 106(3) EPC).

VII. Siemens AG filed an appeal against this decision. The opponents Asea Brown Boveri AG did not, nor did they take part in the appeal procedure.

VIII. Oral proceedings were held before the Board of Appeal on 27 November 1990. They began with the question, raised by the appellants (Siemens AG), of the admissibility of the interlocutory decision of 28 November 1989, and went on to consider the substantive issue of the disputed patent's patentability.

IX. The appellants requested that the interlocutory decision be declared inadmissible and that reimbursement of the appeal fees be ordered, or alternatively that the matter be referred to the Enlarged Board of Appeal.

X. The appellants' arguments in support of these requests can be summarised as follows:

1. The wording of paragraph 3 of Article 102 EPC was very similar to that of paragraphs 1 and 2. Paragraph 3 stated that the Opposition Division would decide to maintain a patent as amended if, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it related met the requirements of the EPC. It might therefore be assumed that the decision referred to in this paragraph was also intended as a final decision within the meaning of the EPC, provided the requirements of Article 102(3)(a) and (b) EPC were met. It followed that Article 102(3) EPC left no room for an interlocutory decision, but required a final decision in the same way as paragraphs 1 and 2.

2. The contested interlocutory decision to the effect that the patent (as amended) and the invention to which it related met the requirements of the EPC clearly showed that, apart from the formal requirements of Article 102(3)(a) and (b) EPC, the matter had been ripe for a final decision.

3. It was understood within the terms of the EPC that a (final) decision to maintain a patent as amended should only be delivered once the patent proprietors had approved the amended text and paid the fee for the printing of a new specification. For the patent proprietors, this meant that if opposition led to appeal proceedings, they might be required to pay further fees for the printing of another new specification.

4. The EPO's current practice in opposition proceedings of delivering an interlocutory decision within the meaning of Article 106(3) EPC affected opponents more adversely than envisaged in the EPC. In order to remain involved in the proceedings, opponents were obliged to pay the appeal fee and to prepare and submit an appeal against the interlocutory decision. This entailed considerable effort at a stage in the proceedings at which the wording of the EPC envisaged no such thing. Nor was it certain at this stage whether the effort involved in conducting the opposition in accordance with the EPC was necessary, bearing in mind that the patent could later be revoked simply because the patent proprietors had not paid the printing fee.

5. In this particular case it also had to be remembered that the communication pursuant to Rule 58(4) EPC (EPO Form 2325.4 03.88), sent on 24 February 1989, specifically stated that, if the opponents expressed no objections to the text in which it was intended to maintain the patent, the patent proprietors would be requested under Rule 58(5) EPC to pay the printing fee and file a translation of any amended claims. In reply to this communication the appellants informed the EPO in their submission dated 13 March 1989 that they had no objections to the text in which it was intended to maintain the disputed patent. Delivering an interlocutory decision under Article 106(3) EPC instead of the request envisaged under Rule 58(5) EPC therefore breached the principle of good faith.

XI. The respondents asked for the requests summarised under point IX to be refused, their arguments including the following:

1. The EPO's established practice of delivering appealable interlocutory decisions during opposition proceedings served a purpose and did not unduly disadvantage the appellants. In no way was it in breach of the EPC.

2. If, instead of an appealable interlocutory decision, a final decision were to be delivered to maintain the patent as amended straight away under Article 102(3) EPC (following payment of the printing fee and filing of a translation under Rule 58(5) EPC), the time limits imposed by the EPC would inevitably mean that publication of the new specification would coincide with the expiry of the period for appeal. However, publication of the new patent specification, and the corresponding notice in the Patent Bulletin, would quite wrongly lead the public to believe that the patent's maintenance during opposition proceedings was final. This was not so, particularly where an appeal had been lodged. To prevent time limits from clashing in this way, there was thus quite clearly every justification for treating cases covered by Article 102(3) EPC differently from those falling under Article 102(1) and (2) EPC, especially as Article 106(3) EPC made express provision for interlocutory decisions with separate appeal.

3. The procedure advocated by the appellants (opponents) - a final decision straight away without an interlocutory decision - had the major drawback for patent proprietors that they might unnecessarily have to bear the cost of printing fees and translations of claims (if further amendments became necessary during appeal). In the case of appealable interlocutory decisions as adopted by the EPO, the only small risk to the opponents was that they might lodge an appeal, giving grounds, without knowing for certain whether in the end (i.e. after appeal proceedings and remittal to the Opposition Division) the patent proprietors would still be interested in maintaining the patent and pay the printing fee. It was highly improbable, however, that a patent proprietor would decide to abandon his patent just after successfully negotiating his way through the examination, opposition and appeals procedure - although the opponents would no doubt welcome his doing so, which he might if he had been impressed by the grounds given for the appeal.

XII. During oral proceedings the Board refused the appellants' requests as listed under point IX.

XIII. As to the substantive question of patentability, the appellants requested as follows: "In addition to the request for revocation of the patent in its entirety, appeal is also lodged against the interlocutory decision of 28 November 1989 with the request that the finding contained therein be set aside."

XIV. In their statement of grounds the appellants once again - as before the Opposition Division - based their arguments essentially on French patent specification FR-A-1 100 351 (E1), reiterating their view that the transformer depicted in Figure 2 of this specification on its own anticipated, and hence to a very considerable degree suggested, the toroidal transformer according to Claim 1 of the disputed patent. ...