T 0018/93 (Remittal/FUJI) 07-11-1994

1. The appeal is admissible.

2. Since the Appellant had disputed the need to appoint oral proceedings in the present case, the Board observes that the question here in dispute was not only whether or not the case should be remitted to the Opposition Division without taking a decision on its merits, but rather whether or not documents (10) to (14), and the novelty objection based on these documents in combination with document (1), should be admitted to the appeal proceedings. Since the admission of this evidence adversely affected the Respondent, the latter was entitled to oral proceedings on that point, before a decision to this effect was taken.

3. It is evident that the Respondent's main request could only be successful in the event that the Board would follow the Respondent's submission and refuse to admit documents (10) to (14) into the appeal, and to consider the novelty objection based on these documents in combination with document (1). Accordingly, this is the main issue to be decided in the present case.

3.1. The Respondent relied exclusively, in this respect, on his written submissions, which were expressly maintained during the oral proceedings, in which he submitted the legal proposition that the objection of lack of novelty should be regarded as a "new ground of opposition" not properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC during the nine-month opposition term, and that, following decision G 9/91 and opinion G 10/91 of the Enlarged Board of Appeal, such a new ground could not be admitted into the appeal without the Respondent's consent, which was refused in the present case.

The Board cannot, in general, agree with this line of argument, since it is based on a construction of the expression "ground of opposition" not in conformity with the meaning of this expression in the context of the above decision and opinion of the Enlarged Board of Appeal More importantly, it does not take account of the fact that the issue of novelty had been implicitly dealt with by the notice of opposition, which referred to Article 100(a) EPC as a whole, i. e. to Articles 52 to 57. EPC, and only in particular to Article 56 EPC. Moreover, this issue had been specifically dealt with during the opposition proceedings, as can be seen from the minutes of the oral proceedings before the Opposition Division, both by way of argument and in the decision itself.

3.2. In particular, decision G 9/91 (OJ EPO 1993, 408) and Opinion G 10/91 (OJ EPO 1993, 420) have been issued as the result of consolidated proceedings and their content is substantially the same. Decision G 9/91 expressly refers in No. 13 of the reasons to "all the grounds of opposition, set out in Article 100(a) to (c)", i. e. to those three grounds which are expressly set out there. Thus there is no basis to extend the concept derivable from the above reasoning to separate "grounds" within one and the same of these categories of grounds of opposition. In particular, objections against novelty and inventive step are both objections under Article 52(1) EPC. Article 54(1) EPC and Article 56 EPC contain only the definitions of the requirements of novelty and inventive step, which requirements moreover relate to the common issue of patentability with respect to the state of the art as defined in Article 54 EPC, paragraphs (2) to (5), and therefore to the same ground of opposition in the above sense (see also T 938/91 of 21. September 1993, No. 1 of the reasons). In addition, decision G 9/91 does not relate to a situation where the Opposition Division had already dealt with the issue of novelty and had given reasons for its finding on that point in the decision under appeal. Therefore the Respondent's submission is not supported by decision G 9/91.

3.3. Likewise, decision T 182/89 (OJ EPO 1991, 391), which was essentially confirmed by the above decision of the Enlarged Board of Appeal, also concerned a late submitted ground of opposition falling under one of the above three different categories of Article 100 EPC. Moreover, this decision only decided the question as to whether or not an Opposition Division or a Board of Appeal was obliged to examine grounds of appeal beyond the extent to which they are properly supported as required by Rule 55(c) EPC. It does not, therefore, support the Respondent's legal proposition that the Opposition Division, let alone the Board of Appeal should have no power under the EPC to consider the question of novelty in the present case.

3.4. Thus it cannot be derived from the above decisions that the Respondent's consent is necessary to give the Board of Appeal the power to deal with the issue of novelty in the present case. On the contrary, the Board holds that it follows from the function of the appeal proceedings, as explained in G 9/91, No. 18 of the reasons, namely to reconsider the decision taken by the first instance on its merits, that any matter so decided by the first instance must become an issue in the appeal proceedings as well.

4. There is, accordingly, no valid legal precedent that precludes the Board's considering the admissibility of documents (10) to (14) into the appeal proceedings and the issue of novelty based on them in combination with document (1).

4.1. Documents (10) to (13) are mentioned in document (1) on page 21, lines 25 to 28 and 38 to 40, where it is disclosed that DIR couplers disclosed in a number of patent specifications, including documents (10) to (13), may be used together with the polymer latex couplers described in Claim 1 of document (1). In the decision under appeal the Opposition Division assumed that all development restrainers released from the DIR couplers disclosed in that list of patent specifications would possess diffusibilities below 0.4, since no information as to the diffusibilities of the DIR couplers described in this list of documents was available (see No. 4.7 of the reasons). By the citation of documents (10) to (13) this finding was challenged in the light of document (14), which was alleged to disclose diffusibility values of two of the development restrainers releasable from the DIR couplers mentioned in documents (10) to (13). In the light of this evidence, therefore, the information content of document (1) has been alleged to be different from that assumed in the decision under appeal. Since in the present case the importance of the diffusibility values of the development restrainers was already apparent from the outset of the opposition proceedings, as the lower limit of the diffusibility of 0.4 was already present in Claim 1 as granted, any available evidence in respect of diffusibility values of development restrainers implicitly disclosed in document (1) should in principle have been filed during the opposition period. Document (14) was published on 5. November 1986 and would therefore have been available during that period. Therefore, the Appellant's submission of the above evidence is late.

4.2. Pursuant to Article 114(2) EPC it is therefore within the discretional power of the Board of Appeal to admit this evidence into the appeal. In exercising this power, two conflicting aims need to be balanced. The first one is that only valid patents should be maintained, i.e. patents which are likely to be maintained in the course of revocation proceedings before national courts. For this reason the Boards of Appeal will normally only admit such late filed evidence which is likely to be relevant to the question of validity. The second one is to conclude the opposition proceedings as swiftly as possible in the interests both of the parties and of the general public, and, for this reason, to forestall any unjustified delay of the opposition proceedings (see e.g. T 326/87, OJ EPO 1992, 522 and T 951/91 of 10. March 1994, to be published in OJ EPO).

4.3. In the present case, the Respondent admitted during the oral proceedings that the knowledge of the diffusibilities of the DIR couplers disclosed in (1) by reference to documents (10) to (13) was highly relevant to the issue of novelty of the subject-matter of the present claims.

4.4. In the circumstances of the present case, where suitable DIR couplers were incorporated in document (1) by reference to more than 20 patent documents, it cannot, in the Board's judgment, be regarded as a deliberate attempt to delay the opposition proceedings that the Appellant did not make the necessary effort, at the outset of these proceedings, to list all development restrainers releasable by the DIR couplers disclosed in these patents, and to determine their diffusibilities, either by an exhaustive search in the patent literature, including even documents not belonging to the state of the art defined in Article 54 EPC, or by his own experiments, and relied instead on the line of argument developed in the notice of opposition, which was based on the assumption that it was sufficient to show that development restrainers having a diffusibility greater than 0,4 belonged to the state of the art and were to be expected to bring about the desired effect. For this reason the additional fact that the significance of the combined disclosure of Examples 1, 6 and 11 of document (13) and document (1), page 21, lines 38 to 42 in the light of the diffusibility value of 5-bromo- benzotriazole mentioned in the patent in suit in Table 2 on page 10 (where a diffusibility of 0,9 is given for this compound) had been overlooked throughout the opposition proceedings cannot ipso facto be regarded as an indication of a deliberate withholding of available evidence for merely tactical purposes.

4.5. Having regard to the above considerations, the Board admits documents (10) to (14) into the appeal. Therefore, the Respondent's main request cannot be allowed.

5. Thus the Respondent's auxiliary request to remit the case to the Opposition Division has now to be considered. In a situation such as the present one, where there is fresh evidence and both parties agreed to have the case remitted, the Board should make use of the first possibility of action provided in Article 111(1) EPC, namely to decide the case, only in exceptional circumstances, which do not exist here. Accordingly, the Board makes use of the second possibility pursuant to Article 111(1) EPC and remits the case to the Opposition Division for further prosecution, taking into account documents (10) to (14). Having regard to the Appellant's submission in the Statement of Grounds of Appeal, according to which the remittal should be for the sole purpose of reconsidering the issue of novelty, the Board would like to observe that pursuant to Article 111(2) EPC, this particular remittal does not remove the Opposition Division's power to reconsider the whole matter of the present opposition, i.e. the question whether or not in the light of the now available evidence the ground of opposition of Article 100(a) EPC prejudices the maintenance of the contested patent, taking into account any amendments proposed by the patentee. During this further prosecution the Opposition Division is therefore free to decide whether or not these documents would also require a reconsideration of the issue of inventive step. In addition, the Opposition Division is free to consider the relevance of document (9), and to decide whether this document should also be admitted into the proceedings. Furthermore, the Board finds it appropriate in the present case that the Opposition Division should itself decide on the merits of the Respondent's request for an award of costs (Article 104(1) and (2) EPC), after the Appellant has been given an opportunity to present his observations in respect of this request (Article 113(1) EPC).