Pages 261-269

BOARDS OF APPEAL

Decisions of the Technical Boards of Appeal

Decision of Technical Board of Appeal 3.4.1 dated 1 June 1995 - T 501/92 - 3.4.1*

(Official text)

Composition of the board:

Patent proprietor/Respondent: The Arthur G. Russell Company, Incorporated

Opponent/Appellant: Grundig E.M.V.

Headword: Alphanumeric display/ARTHUR G. RUSSELL

Article: 56, 99, 100, 101, 110, 111 EPC

Rule: 57, 58, 64, 66(1) EPC

Keyword: "Absence of a request from the proprietor for maintenance of the patent, during opposition appeal proceedings, not in itself a ground for allowing the appeal and revoking the patent" - "Inventive step - (no)"

Headnote

I. If a new ground for allowing the appeal based upon the facts set out in the file record is raised by an appellant for the first time as a new argument during oral proceedings at which the respondent is voluntarily absent, it would be contrary to Article 113(1) EPC and contrary to the principles underlying decision G 4/92 (OJ EPO 1994, 149) to decide to allow the appeal on the basis of this new ground without first giving the respondent an opportunity to comment thereon.

II. Any procedural request made by a party to first instance proceedings before the EPO is not effective or applicable within subsequent appeal proceedings (following decision T 34/90, OJ EPO 1992, 454).

III. In a notice of appeal, the statement pursuant to Rule 64(b) EPC of the "extent to which amendment or cancellation of the decision is requested" defines the legal framework of the appeal proceedings (following decision G 9/92, OJ EPO 1994, 875).

IV. In admissible opposition appeal proceedings, in the absence of a "request" or reply from a respondent indicating that the decision of the opposition division should not be amended or cancelled, a board of appeal must still examine and decide whether the appeal is allowable, in accordance with Articles 110 and 111 EPC.

Summary of facts and submissions

I. European patent No. 0 133 344 relating to a system for displaying alphanumeric messages was opposed on the grounds that the subject-matter of the patent did not involve any inventive step as required by Article 100(a) EPC and that the claimed invention was not so clearly and completely disclosed that it could be carried out by a person skilled in the art (Article 100(b) EPC).

...

Following the filing of the notice of opposition, the proprietor's representative stated that he was instructed to file no observations in reply, other than to state that the proprietor relied upon the file record of the application during proceedings before the examining division, for patentability of the invention.

The opposition division rejected the opposition.

II. The only independent claim of the patent as granted forming the basis of the decision of the opposition division has the following wording:

...

III. The opponent lodged an appeal against the above decision and requested in the notice of appeal that the patent be revoked. The statement of grounds of appeal contended that the claimed subject-matter did not involve an inventive step with regard to the documents cited during the proceedings before the opposition division and the following additional document:

...

IV. The proprietor did not file any observations in response to the notice of appeal or statement of grounds of appeal.

In reply to the summons to oral proceedings, the representative of the proprietor stated that the proprietor would not be represented at the oral proceedings, and requested that copies of the minutes of the oral proceedings and of the decision of the board of appeal be sent to him in due course.

V. Oral proceedings took place on 1 June 1995 in the absence of the proprietor.

At the beginning of the oral proceedings, the opponent drew attention to the fact that at no time during the appeal proceedings had the proprietor filed any request; in particular no request for maintenance of the patent had been filed, and no observations in reply to the grounds of appeal had been filed either.

The opponent submitted that the filing of such a request by the proprietor in the appeal proceedings was an essential procedural requirement, and relied in particular upon Rule 66(2)(e) EPC. In the absence of such a request, the opponent submitted that the appeal should be allowed and the patent revoked, and that an apportionment of costs should be ordered. Alternatively he requested that a question on this point should be referred to the Enlarged Board of Appeal.

After deliberation on this point, the decision was announced that the opponent's request for revocation on the above ground was rejected. The opponent was therefore asked to present his case concerning alleged lack of inventive step.

...

VII. At the conclusion of the oral proceedings the decision was announced that the patent is revoked on the ground of lack of inventive step.

Reasons for the decision

1. Procedural point: absence of a request from the proprietor

As stated in paragraph V above, the opponent submitted at the beginning of the oral proceedings that the failure by the proprietor to file a formal "request" for maintenance of the European patent should lead automatically to revocation of the patent, and that there was in this circumstance no need to consider the substantive grounds of opposition - in particular lack of inventive step.

The opponent did not make this submission in writing before the oral hearing. The proprietor was not represented at the oral hearing and was therefore unable to reply to this submission at the oral hearing. The submission is a new legal reason why the appeal should be allowed, based upon the facts as set out in the file record, and is therefore a new "ground" within the meaning of Article 113(1) EPC, rather than merely a new argument. It would be contrary to Article 113(1) EPC, and contrary to the principles underlying opinion G 4/92 (OJ EPO 1994, 149) if the board was to allow the appeal and revoke the patent on the basis of this submission, without first giving the proprietor an opportunity to present comments in reply; because although the opponent's submission did not include new facts or evidence and was essentially a new argument, based upon the facts set out in the file, such new argument brought forward for the first time at the oral hearing in the appeal proceedings a new legal reason for allowing the appeal. Giving the proprietor an opportunity to present comments in reply would have involved an adjournment of the oral hearing and continuation of the appeal proceedings in writing. However, having carefully considered the opponent's submissions, the board decided that there was no need to take such a course in order to hear submissions in reply from the proprietor, because the board is satisfied that the absence of a "request" from the proprietor, and indeed the absence of any substantive reply to the opponent's contentions during the appeal proceedings, does not mean that the patent has to be revoked on procedural grounds. The reasons for this conclusion are set out below.

1.1 During the proceedings before the opposition division, as indicated in paragraph I above, the proprietor stated that he relied upon the file record during proceedings before the examining division to support the patentability of the claimed invention. Within the proceedings before the opposition division, such statement could clearly be interpreted as indicating the proprietor's wish that the patent should be maintained as granted. However, as stated in decision T 34/90 (OJ EPO 1992, 454), "appeal proceedings are wholly separate and independent from first instance proceedings" for all procedural purposes. Thus any procedural request made by a party to first instance proceedings before the EPO is not effective or applicable within subsequent appeal proceedings before a board of appeal. Any statement during first instance proceedings which may affect the procedure within the first instance proceedings is not applicable in any subsequent appeal proceedings, and has to be repeated during subsequent appeal proceedings if it is to be procedurally effective during such appeal proceedings.

In the present case, as indicated in paragraph IV above, the proprietor made no statement which could be interpreted either explicitly or implicitly as a request for maintenance of the patent, and merely requested that he be informed of the final result of the proceedings.

1.2 Opposition appeal proceedings are commenced by the filing of a notice of appeal within the prescribed time limit under Article 108 EPC by a party to the proceedings before the opposition division who is adversely affected by the decision of the opposition division. According to Rule 64(b) EPC, a notice of appeal shall contain inter alia "a statement identifying the decision which is impugned and the extent to which amendment or cancellation of the decision is requested". Thus an appellant must state at the outset of appeal proceedings the extent to which the decision which is the subject of the appeal is challenged. This is the "request" of the appellant, and it defines the legal framework of the appeal proceedings (see paragraphs 7 to 12 of decision G 9/92, OJ EPO 1994, 875; in particular, paragraph 9 states that the subject-matter of the appeal proceedings is always the appeal itself.)

Subsequently the appellant must file within the prescribed time limit "a written statement setting out the grounds of appeal" (Article 108 EPC), that is, "the legal and factual reasons why the decision under appeal should be set aside and the appeal allowed" (see eg decisions T 145/88, OJ EPO 1991, 251, and T 220/83, OJ EPO 1986, 249).

1.3 If the appeal is admissible, the "examination of the appeal" follows (Article 110 EPC). Pursuant to Article 110(2) EPC the examination of the appeal "shall be conducted in accordance with the provisions of the Implementing Regulations". Under Rule 66(1) EPC, in an opposition appeal the procedural provisions relating to proceedings before the opposition division are "applicable to appeal proceedings mutatis mutandis", unless otherwise provided.

In proceedings before the opposition divisions, following the filing of a notice of opposition under Article 99(1) EPC (which is generally equivalent to the combination of a notice of appeal and a statement of grounds of appeal in appeal proceedings), and following examination of the notice of opposition for admissibility pursuant to Rule 56 EPC, under Rule 57(1) EPC as part of the "Preparation of the examination of the opposition" the opposition division shall "invite" ("auffordern", "inviter") the proprietor to file "observations" within a fixed period. Rule 57(3) EPC states that "The observations and any amendments filed by the proprietor" shall be communicated to the other parties. The use of the words "The observations" in contrast to "any amendments" appears to assume that such observations will be filed by the proprietor. The other parties may be invited to reply to the proprietor's observations, again within a fixed period.

Article 101 EPC is concerned with "Examination of the opposition". Article 101(1) EPC states that "If the opposition is admissible, the opposition division shall examine whether the grounds of opposition laid down in Article 100 prejudice the maintenance of the European patent". During this examination, Article 101(2) EPC and Rule 58 EPC envisage that the opposition division may issue one or more communications to the parties. There is nothing in the relevant articles or rules of the EPC to suggest that such examination of the opposition shall only take place if the proprietor has filed a "request" for maintenance of the patent (either as granted or as proposed to be amended) in reply to the notice of opposition. On the contrary, in the board's view the clear implication from the references to "fixed periods" in Rule 57 EPC is that, if a proprietor is invited to file observations within a fixed period and fails to do so within that period, examination of the opposition in accordance with Article 101 EPC shall commence upon expiry of the fixed period.

1.4 Applying these procedural provisions mutatis mutandis to the opposition appeal procedure, in the board's view it follows that following the filing of (an admissible) statement of grounds of appeal by an opponent/appellant, the proprietor has to be invited to file observations in reply within a fixed period. The practice of the boards of appeal is to send the statement of grounds of appeal to the proprietor/respondent under cover of a form stating "Any submissions in answer hereupon must be filed within ..." a fixed period.

If no observations are filed by the proprietor/respondent within the fixed period, examination of the appeal is commenced in accordance with Article 110(1) EPC, and following such examination, "the board of appeal shall decide on the appeal" in accordance with Article 111(1), first sentence, EPC. Again there is nothing in the relevant provisions concerning appeal procedure which suggests that examination of an decision upon an appeal shall only take place if the respondent has filed a formal "request" in reply to the statement of grounds of appeal.

On the contrary, the relevant provisions (in particular, those of Articles 110 and 111 EPC) clearly suggest that if the appeal is admissible, the board of appeal shall examine and decide upon the allowability of the appeal (that is, whether the decision of the opposition division should be amended or cancelled in accordance with the opponent/appellant's request in the notice of appeal), whether or not the proprietor/respondent has filed a request for maintenance of the patent.

1.5 The opponent/appellant in the present case relied in particular upon Rule 66(2)(e) EPC in support of his argument that a formal "request" by the proprietor/respondent was a procedural necessity if he wished that the patent should be maintained. This rule requires that the written decision in every appeal must contain inter alia "a statement of the issues to be decided" ("die Anträge der Beteiligten", "les conclusions des parties"). While it is true that the German and French versions of this ruleappear to emphasise that the "requests" of the parties shall be stated in the written decision, while the English version refers more neutrally to the "issues to be decided", nevertheless, this ruleis only concerned with the contents of the written decision, and is not concerned with the procedure prior to or during the examination of the appeal. Thus the existence of this ruledoes not assist the opponent/appellant in the present case. The reference to "die Anträge" in the German text must be interpreted as including "der Antrag" in the singular, if only one formal request, namely that of the appellant, has been filed (as in the present case).

1.6 The opponent relied upon the fact that the procedural provisions of German law require in the circumstances of a case such as the present that the respondent must file a formal request in reply to the appellant's request, if he wishes to contest the appeal. However, the present appeal proceedings are governed by the relevant provisions of the EPC, which are discussed above and which are different from the provisions of the German law.

1.7 The opponent also requested that a question on the point at issue should be referred to the Enlarged Board of Appeal. However, the board decided to reject this request, because the proper interpretation of the relevant provisions of the EPC seems to lead to a clear result as discussed above.

1.8 Similarly the request by the opponent for an apportionment of costs because of the failure by the proprietor to file a formal request during the appeal proceedings has no legal basis and is rejected.

1.9 In conclusion, therefore, in the board's judgment, in the absence of a "request" or reply from a respondent during opposition appeal proceedings indicating that the decision of the opposition division should not be amended or cancelled, a board of appeal must still examine and decide whether the appeal is allowable, in accordance with Articles 110 and 111 EPC.

2. Inventive step

...

3. Since the subject-matter of the patent does not involve an inventive step, the patent has to be revoked pursuant to Article 102(1) EPC. It is therefore not necessary to consider the opponent's submission that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Order

For these reasons it is decided that:

1. The opponent's request for revocation of the patent on the ground set out in paragraph V above, and the associated requests for an apportionment of costs and for referral of a question to the Enlarged Board of Appeal, are rejected.

2. The appeal is allowed, and the European patent is revoked on the ground of lack of inventive step.