Pages 808-817

BOARDS OF APPEAL

Decisions of the Technical Boards of Appeal

Decision of Technical Board of Appeal 3.3.1 dated 15 December 1992 - T 390/90 - 3.3.1^*/**

(Official Text)

Composition of the Board:

Patent proprietor/Respondent: Josep Maria Gussinyer, S.A.

Opponent/Appellant: Conte, Pietro, avv.

Intending intervener: Cartiere Paolo Pigna S.p.A.

Headword: Crystalline paper filler/GUSSINYER, S.A.

Article: 54(1) and (2), 56, 105, 106(1), 111(1) and 112(1)(a), 114(1) and 115 EPC

Rule: 66(1) EPC

Keyword: "Admissibility of intervention of an assumed infringer during appeal proceedings" - "Legal status of Boards of Appeal" - "Non-equivalence of appeal and opposition proceedings" - "Boards' freedom not to refer to Enlarged Board: procedural economy" - "Novelty (yes) - second document incorporated by reference into the primary document - no disclosure of a continuous process in the light of common general knowledge at the relevant publication date" - "Inventive step (yes) - onus of proof regarding disputed effects"

Headnote

An intervention under Article 105 EPC during appeal proceedings is not permissible, but is limited to opposition proceedings; interpretation of G 7/91 and G 8/91 (OJ EPO 1993, 346, 356), see also T 27/92 (OJ EPO 1994, 853).

Summary of Facts and Submissions

I. The grant of European patent No. 0 056 200 in respect of European patent application No. 81 306 189.2 was announced on 23 September 1987 (cf. Bulletin 87/39). ...

II. A notice of opposition was filed on 21 June 1988, Pietro Conte requesting that the patent be revoked on the grounds that its subject-matter lacked novelty and did not involve an inventive step. ...

III. By a decision delivered orally on 20 March 1990 with written reasons posted on 25 April 1990, the Opposition Division rejected the opposition.

...

IV. Notice of appeal was filed against this decision on 12 May 1990 by the opponent, and the appeal fee was paid on the same date.

A statement of grounds of appeal was submitted on 3 September 1990.

V. Notice of intervention pursuant to Article 105 EPC was subsequently filed by Cartiere Paolo Pigna S.p.A. on 25 October 1990. It was based on the statement that proceedings for the infringement of the patent in suit had been instituted against it on 27 July 1990 before the Court of Bergamo. It also contained a reasoned statement of grounds for opposition. The required opposition fee as well as the appeal fee were paid on the same date.

VI. The appellant argued that on the basis of the documents cited in section II above, of four other documents cited during the opposition proceedings, as well as on the basis of 18 additional documents filed during the appeal proceedings, the claimed subject-matter was not novel and did not involve an inventive step. Moreover, he contended that the subject-matter claimed extended beyond the content of the application as filed.

...

VII. The intending intervener also contested the patentability of the claimed process, but largely on the same grounds and evidence, save that in additional support of the argument that the claimed process did not provide unexpected advantages, he filed a test report on 5 May 1992.

VIII. The respondent challenged the admissibility of the appeal under Rules 64 and 65 EPC and also objected to the allowance of the intervention under Article 105 EPC.

...

IX. In two earlier communications issued on 14 January 1991 and 19 October 1992, the Board expressed the preliminary view that the intervention would be permissible.

This preliminary view was challenged by the respondent on substantially the same grounds as the ones he relied upon in the course of subsequent oral proceedings. He also requested the postponement of the scheduled oral proceedings on the ground that an allegedly identical point had been referred to the Enlarged Board in case T 202/89. The Enlarged Board's decision in that case (G 4/91, OJ EPO 1993, 707) was issued on 3 November 1992 and it was clear from it, as it was indeed from the reference itself, that the point at issue there differed from the one that called for decision in this case. In T 202/89 an intervention was sought when the first instance decision had become final, as no appeal had been filed, although the attempt to intervene was launched during the appeal period prescribed by Article 108 EPC.

After the issue of two further Enlarged Board decisions, namely G 7/91 and G 8/91 of 5 November 1992 (OJ EPO 1993, 356, 346), which both dealt with legal questions which bore much greater relevance to the one in the present case, the Board informed all parties that in the light of these decisions the question of allowability remained an open one.

X. Oral proceedings were held on 15 December 1992.

XI. As a first step, and before the appeal proceedings proper, the Board dealt with the question of the allowability of the intervention and heard all the parties on this specific issue, including the intending intervener, who was independently represented, although the appellant's representative also had express authority to act for the intending intervener in case the attempt to intervene proved unsuccessful.

XII. The intending intervener and the appellant both argued that Appeal Boards under the European Patent Convention (EPC) were not set up as courts of law, nor did they act as courts of law, and were thus not de facto courts of law. They were, by contrast, merely parts of the general administrative organisation of the European Patent Office, so that appeals were no more than mere continuations of the (administrative) first instance, here the opposition proceedings. This being the case, the reference in Article 105 EPC to opposition proceedings could fairly be construed as including appeal proceedings as well.

They also argued that, regardless of the legal status of the Appeal Boards, Article 106(1) EPC, by providing that appeals should have a suspensive effect, created a procedural link between oppositions and appeals, in the sense that oppositions continued or were "on foot" during the appeal stage, albeit only for the purposes of the appeal proceedings. Therefore, interventions under Article 105 EPC during the appeal stage were clearly allowable. This interpretation of Article 106(1), they argued, would satisfy the underlying intention of Article 105 EPC that the validity of a European patent, which became the subject of infringement proceedings before a national court, should be centrally established by the European Patent Office.

Finally, they submitted that Article 115 EPC afforded a wholly inadequate opportunity to intending interveners to attack the validity of patents under which they had been sued, since it gave no right of audience.

XIII. In response to these arguments, the respondent submitted that Article 106(1) EPC was suspensive only of the legal effects of first instance decisions, but did not thereby prolong or preserve their antecedent procedure, here the opposition, which was effectively terminated by the decision under appeal. The appellant's submission that appeal proceedings were the legal equivalent of opposition proceedings, albeit in another guise, was, so he submitted, also contrary to the decision of the Enlarged Board of Appeal in G 7/91, which had dealt expressly with the essential difference between first instance (opposition) and appeal proceedings, and held that, whilst opposition proceedings were purely administrative, appeal proceedings were "administrative court proceedings". Accordingly, Article 105 EPC should be literally interpreted, and not extended to a wholly different type of proceedings, namely appeals.

He further submitted that an intervention under Article 105 EPC at such a late stage could well lead to further delay, particularly if a wholly new and decisive point arose from the intervention, requiring a reference back to the first instance under Article 111(1) EPC, on the ground that a new case had been raised which could, in line with the Board's established jurisprudence, not be decided by way of appeal.

Finally, he submitted that Article 115 EPC afforded a fully adequate opportunity to intending interveners to attack the validity of patents already at risk during appeal proceedings, i.e. after the termination of the opposition proceedings brought by others, despite the fact that this article, unlike Article 105 EPC, gave no express right of audience.

XIV. The intending intervener asked that the request for intervention under Article 105 EPC be allowed. The appellant supported the above request.

The respondent asked that this request be refused.

XV. After deliberation by the Board, the Board's interlocutory decision to refuse the request for intervention was announced.

XVI. The oral proceedings were then continued with respect to the appeal proper, with the intending intervener not being a party.

...

XX. The appellant requested that the decision under appeal be set aside and that European patent No. 0 056 200 be revoked.

The respondent requested that the appeal be dismissed.

XXI. At the conclusion of the oral proceedings, the Board announced its decision to dismiss the appeal.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is admissible. Since the respondent did no longer raise an objection to the admissibility of the appeal during oral proceedings, the Board sees no reason to give details for this finding.

2. Admissibility of intervention during appeal stage under Article 105 EPC

2.1 Although neither the appellant nor the respondent, nor for that matter the intending intervener, had made a formal request for a reference of this point to the Enlarged Board of Appeal, the Board accepts that this point of law could be regarded as being of sufficient importance to call for such a reference. Under Article 112(1)(a) EPC, the Boards have discretionary power to refer any question to the Enlarged Board, either if a request for such reference had been made by a party, or if an important point of law arises and, in both cases, if the Board considers that a decision by the Enlarged Board is required to ensure uniform application of the law or to decide upon the point of law that had arisen. It goes without saying that if the point of law is not an important one, or even if it is, no serious question arises in relation to it, there is no need for a reference. However, even if a serious question does arise in relation to an important question of law, it is still open to the Board not to refer the matter to the Enlarged Board. Finally, if a Board refuses a party's request for a reference, it is obliged to give reasons in its final decision for such refusal. The same provision does not, however, extend to the case where refusal to refer is not made in response to such a formal request.

In the Board's view, the point of law involved here is undoubtedly an important one, so that, on the face of it, it could, of its own motion, refer the matter to the Enlarged Board. However, for the various reasons given below, the Board has decided not to refer but to give a final decision in this appeal on the above issue.

2.2 In the Board's judgment, the underlying and decisive point of law concerning the nature of appeal proceedings has already been dealt with and decided, most recently by the Enlarged Board in decisions G 7/91 and G 8/91, as well as by a number of earlier cases dealing with the nature of appeals, as distinct from first instance proceedings in relation, (mainly) to the submittal of late-filed evidence and other matter that raises a case that is either entirely new or far removed from the one that had led to the decision under appeal (cf. T 97/90, OJ EPO 1993, 719; T 26/88, OJ EPO 1991, 30; T 326/87, OJ EPO 1992, 522; and T 611/90, OJ EPO 1993, 50).

The most significant passage on this point in G 7/91 is to be found at paragraph 7 of the Reasons, where it is stated as follows:

"Whereas the opposition procedure is a purely administrative procedure, the appeal procedure must be regarded as a procedure proper to an administrative court, in which an exception from general procedural principles, such as the principle of party disposition, has to be supported by much weightier grounds than in administrative procedure."

This finding1 echoes an earlier decision, namely G 1/86 (OJ EPO 1987, 447) of the Enlarged Board, which declared that the Boards of Appeal are courts (official German language and French translation) or act as courts (English translation). The real point at issue, however, is not whether the Boards of Appeal are or are not courts, but whether appeal proceedings are either equivalent or closely analogous to opposition proceedings. In this respect, decisions G 7/91 and G 8/91 clearly confirm the previous clear and long line of judicial authority that they are not. This therefore disposes of the intending intervener's submission, also espoused by the appellant, that appeal proceedings are no more than opposition proceedings in another guise.

2.3 The question of law expressly decided by G 7/91 and G 8/91 was the extent to which Rule 66(1) EPC, giving effect to Article 111(1) EPC, could be said to affect the interpretation of Rule 60(2), last sentence, EPC, which is clearly limited to opposition proceedings. Any decision on this point must involve establishing the outer limits of the investigative powers conferred upon Boards of Appeal by Article 114(1) EPC, which, at least in the English version, is rather peremptorily worded: "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". The legal issue under Rule 60(2) EPC arises directly from this allegedly limitless power, which could be said to continue to exist even when an opposition - and arguably by virtue of the term mutatis mutandis in Rule 66(1) EPC - an appeal, had been withdrawn. The Enlarged Board clearly held that the difference between appeal and opposition proceedings was so great, that such an investigative power did not survive the withdrawal of the appeal, so that Rule 60(2), which is in terms confined to oppositions, had to be literally construed.

The selfsame type of legal issue arises in the present case, because Article 105 EPC is likewise expressly limited to oppositions. Is there, or is there not, sufficient identity or similarity between appeal and opposition proceedings to permit, by analogy, the application of this article to proceedings which it literally omits to mention? In the light of the jurisprudence referred to above, and in particular on the basis of the two latest decisions of the Enlarged Board, G 7/91 and G 8/912, the answer is clearly 'No', so that on this point, too, the scope of the term mutatis mutandis in Rule 66(1) EPC must be severely limited by the essential and fundamental dissimilarity between the two types of proceedings: the former administrative, and the latter judicial. Accordingly, the Board finds that the important point of law (the procedural extent of Article 105 EPC) has, by clear implication, already been fully and unambiguously resolved, so that really no question of law can arise for discretionary reference to the Enlarged Board.

Even if the Board were wrong in its finding, it would still, as was said before, be open to it to decide the issue here and now and, as was previously stated, no reasons need be given under Article 112 EPC for such a course of action. The Board wishes to state that the overriding requirement of procedural economy, involving the swift, efficient and cost-effective resolution of all matters in dispute before the EPO, including the Boards of Appeal, is of such importance and significance that the discretionary power to refuse to refer (Art. 112(1) EPC) can properly be based upon it.

In this connection, as the respondent rightly submitted, an intervention at such a late stage could in some instances, particularly if a wholly new or substantially dissimilar case was advanced by the intervener, lead to remittal to the first instance (Art. 111(1) EPC), and even if it were possible to decide on a "fresh" case raised by the intervener in the course of an appeal, dealing with the matter at such a late stage would be bound, in the nature of things, to detract from procedural economy.

Lastly, Article 115 EPC does, in the Board's judgment, provide a sufficient outlet for non-parties to attack patents challenged by others in what in effect are centralised revocation ("opposition") proceedings3, as well as in the course of appeals from decisions in such proceedings, since Article 115 sets no upper time limit to the presentation by persons wishing to make adverse observations concerning the patentability of inventions the subject of patent applications/patents.

Thus, a decision by this Board on the procedural point here at issue fully safeguards procedural economy without depriving the intending intervening party of the opportunity to state his case. Indeed, the Board notes that the appellant's representative was also empowered and did act for the intervener, who could therefore not be said to have been deprived of a fair hearing on the case he had put forward originally, by way of intervention.

Finally, concerning the respondent's submissions on Article 106(1) EPC (suspensive effect), the Board accepts them in their entirety.

2.4 Accordingly, the Board finds that the intervention under Article 105 EPC is not allowable. In consequence, the intervener was excluded from the further proceedings.

...

Order

For these reasons it is decided that:

The appeal is dismissed.