T 0273/84 (Silico-Aluminate) 21-03-1986

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Under Rule 66(1) EPC, and unless otherwise provided, the Boards of Appeal consider an appeal by applying the provisions relating to proceedings before the department which took the decision appealed against. Under Rule 55(c) EPC a notice of opposition must contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based as well as an indication of the facts, evidence and arguments presented in support of these grounds. The period for opposition is nine months (Article 99(1) EPC). In this case, however, the appellant cited four new supporting documents in the statement of grounds for appeal against the decision of the Opposition Division, hence after the period for opposition had expired. The question therefore arising is whether in appeal proceedings following opposition a Board of Appeal may allow new documents to be introduced or whether it must consider the periods for opposition laid down in Article 99 EPC as applying. Article 114(2) EPC states that the European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned. However, this discretionary power is given to departments of the EPO clearly only in order to ensure that proceedings run smoothly and to forestall tactical abuse. The Guidelines for Examination in the EPO stress the promptness with which documents in support of an opposition must be submitted and the time limits for doing so (Guidelines D-IV, 1.2.2.1(f), last paragraph, D-V, 2; E-VI, 2; and OJ (EPO) 9/1985, pp. 272, 277, 278). Nonetheless, Article 114(1) EPC enunciates a principle which must be adhered to by a department of the EPO in all proceedings before it, namely examination by the EPO of its own motion; "In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought." It follows from this Article that the examination is not restricted to, but must include, the evidence furnished by the parties. Furthermore this obligation on the EPO to examine of its own motion applies in all proceedings. In the present case citation (3) cannot be ignored, since it raises doubts as to the novelty of the patent's subject-matter and thus as to the soundness of the impugned decision. The department of first instance must decide at its discretion whether the other three new documents are admissible.

3. The opposed patent relates to a process for producing an alkali-metal silico-aluminate by hot mixing at least one source containing silica and alumina with an alkali-metal hydroxide and water, one at least of the reactants being fed in in solid form, and the evolution of the mixture until it becomes a suspension of silico-aluminate which is then filtered, washed and dried. The type of silico-aluminate obtained is either 4A or Na-P, depending on the proportions of the reactants in the mixture. In the first case (Claim 1) the initial medium must be of the following composition, expressed in molar ratios:

SiO2/Al203 1.5 to 2.5

Na20/Si02 0.8 to 1.2

H20/Na20 7 to 15

In the second case (Claim 4) composition of the initial medium must be:

SiO2/Al203 2.5 to 5

Na20/Si02 0.6 to 1

H20/Na20 12 to 30

4. Of the various documents cited by the appellants (opponents), citation (3) is held by the Board to be the closest prior art. It describes a single-stage process for the preparation of zeolite A in which metakaolin is added to soda and water in a mixer so as to obtain a molar ratio of H20/Na20 of between 15 and 100. Examples 1 to 13 in citation (3) all involve the use of metakaolin, and hence constant molar ratios of Na20/Si02 and Si02/Al203 lying within the ranges claimed in the opposed patent. The constituents are mixed at a high temperature (85° C) and filtered, the filtrate then being washed and dried. According to this citation it is possible by the process described to obtain zeolite A of 90% or even 95% purity (see the claim, column 1, lines 44 to 47 and 62 to 68; column 2, lines 4 to 9 and 31 to 35; Example 1 and the table in columns 3 and 4).

5. In their observations filed subsequently to the statement of grounds the respondents (patent proprietors) acknowledged the prior disclosure of a H20/Na20 molar ratio of 15, but considered the process described in citation (3) to be contrary to the teaching of the opposed patent in which the components are mixed in solid form, and consequently held Claim 1 to be novel. This argument is open to question. Claim 1 of the opposed patent states merely that at least one of the reactants is fed in in solid form. But this is also the case of citation (3) (see Example 1). Furthermore, a delimitation vis-à-vis citation (3), though apparently quite feasible on the basis of a limit value for the molar ratio H20/Na20, would not dispel the doubts as to the inventive step involved in the subject-matter of Claim 1.

6. It is immediately clear from this newly established closest prior art, with no further consideration of the case being necessary, that the impugned decision of the department of first instance cannot stand. Examination as to patentability needs to be resumed on a new basis and the technical problem to be solved by the invention determined in the light of a new citation. That is primarily the task of the department of first instance. Were the Board itself to undertake this examination on the new basis and taking into account the state of the art as newly established, this would necessarily have the effect of bypassing one level of jurisdiction, which in turn would be contrary to the principle of equity followed by the Board. However, thus allowing the introduction of documents submitted after the period for opposition has expired could lead to abuses difficult to control. The Board accepts that to allow such documents necessarily means considerably lengthening the procedure and that certain limits must be set. In the Board's opinion those limits were not exceeded in the present case, for the reasons given in points 2, 4 and 5 above, since the inconvenience resulting from the lengthened procedure is here offset by the obligation imposed by Article 114(1) EPC on all departments of the EPO to conduct an examination of their own motion.

7. The Board must therefore set aside the decision of the department of first instance, without reference to the validity of its grounds. In so doing, the Board is availing itself of its power under Article 111(1) EPC in order to refer the matter back to the Opposition Division for renewed examination of Claims 1 to 4 of the opposed patent as to novelty and inventive step.