Pages 393-395

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 14 July 1989 concerning the application of Rule 58(4) EPC in opposition proceedings

1. In Decision G 1/88 dated 27 January 1989 (OJ EPO 1989, 189) the Enlarged Board of Appeal decided as follows concerning the application of Rule 58(4) EPC (notification of the intention to maintain the European patent as amended):

1.1 The fact that an opponent has failed, within the time allowed, to make any observations on the text in which it is intended to maintain the European patent after being invited to do so under Rule 58(4) EPC does not render his appeal inadmissible. (Headnote)

1.2 A communication under Rule 58(4) EPC is not required when the patent proprietor has already given his express approval to the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC and the opponent has had - or is to be given - sufficient opportunity, according to the circumstances, to comment on the new text (Point 6 of the Reasons for the Decision).

1.3 If these prerequisites were created in the course of oral proceedings, or in written proceedings by means of a communication to the parties, the application of Rule 58(4) EPC as a formality terminating the proceedings is neither necessary nor expedient (Point 7 of the Reasons for the Decision).

2. This decision makes it necessary to alter procedural practice. In the interests of a speedy, uniform procedure with at the same time greater legal certainty for the parties, the procedure adopted is now as follows:1

2.1 If the Opposition Division is of the opinion that the patent can be maintained on the basis of the text submitted or approved by the patent proprietor, and the opponent has had sufficient opportunity to comment on that text, either in writing or in the course of oral proceedings, and been able to express his views on the reasons decisive to maintenance of the patent, the Opposition Division then immediately issues an interlocutory decision stating that, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings the patent and the invention to which it relates meet the requirements of the EPC. At the end of oral proceedings the decision can be pronounced immediately and formulated in writing without delay.

2.2 An interlocutory decision of this nature, against which separate appeal is allowed, is issued in all cases where a patent is maintained in amended form, even if the opponent has declared his approval of the text notified by the Opposition Division or has not commented on it.

2.3 In the event of possible maintenance of a patent as amended, the Opposition Division will immediately endeavour to obtain the patent proprietor's consent to an allowable amended version and to give the opponent the right to be heard. The prerequisites are thus created for an immediate interlocutory decision, which can therefore be issued without a prior communication under Rule 58(4) EPC. A separate communication of this nature, in conjunction with an invitation to state observations within two months if a party disapproves of the text in which the patent is to be maintained, is hence no longer to be regularly expected in opposition proceedings.

3. Once the Opposition Division's interlocutory decision has become final, the proceedings are continued with the communication pursuant to Rule 58(5) in which the patent proprietor is requested to pay the fee for printing and file a translation of the amended claims (Guidelines for Examination in the EPO, D-VI, 6.2.3). The same happens if the amended documents with which the patent is to be maintained were established in the course of the opposition appeal proceedings.