T 1366/05 (Polymer electroluminescent device/PHILIPS) 18-10-2007

1. The appeal is admissible.

2. The Appellant has objected to the decision under appeal revoking the patent for lack of novelty inter alia as being insufficiently reasoned in violation of Rule 68(2) EPC. Therefore, before considering the substantive issue of novelty, it should first be examined whether the decision under appeal respects the requirement of that provision.

3. According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of Rule 68(2) EPC a decision must contain, in logical sequence, those arguments which justify its tenor. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is of course to enable the Appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00, OJ EPO, 2003, 546).

4. In the present case, the deciding body, here the Opposition Division, decided on the issue of novelty, namely that the claimed subject-matter of the patent in suit was not novel in view of the prior art (Article 54 EPC). Accordingly, the logical chain of reasoning of the Opposition Division starting with the identification of that portion of the prior art used to justify the final conclusion that the claimed subject-matter lacks novelty must be indicated in the decision under appeal.

The only part of the section "Reasons for the Decision" of the written decision under appeal dealing with the issue of novelty is to be found in point 4 comprising three paragraphs. The third and last paragraph thereof, i.e. paragraph 4.3, is the sole portion of the written decision under appeal which may reveal considerations and findings of the Opposition Division on the issue of novelty and, thus, is the sole portion of the decision which could justify the Opposition Division's conclusion of lack of novelty. However, there is no reasoning at all in that paragraph which is limited to the mere statement of the conclusion reached by the Opposition Division, namely that documents (2) and (3) anticipate the subject-matter of claims 1 to 5 and that document (1) anticipates the subject-matter of claim 6. That paragraph 4.3 of the written decision under appeal nowhere indicates relevant passages of the documents cited, specific features disclosed therein and considerations why those features are disclosed in combination resulting necessarily in the conclusion of lack of novelty of the subject-matter claimed.

Accordingly, in the written decision there is no reasoning proper to the Opposition Division for its conclusion that the subject-matter of the claims lacks novelty. The sole statement of the conclusion reached does not constitute a reasoning within the meaning of Rule 68(2) EPC.

5. The two first paragraphs of that point 4, i.e. paragraphs 4.1 and 4.2 of the written decision under appeal, merely summarize the submissions of the opponent in respect of novelty generally citing pages and passages in documents (1), (2) and (3). Thus these two paragraphs in fact would rather belong to the section "Facts and Submissions" of the written decision under appeal and they do not reflect the Opposition Division's own considerations. The mere summary of a party's submission is not per se a reasoning proper to the deciding body. Consequently, both paragraphs 4.1 and 4.2 cannot reason the decision taken by the Opposition Division.

However, even if one were to assume that the Opposition Division adopted the summary of the opponent's submission as its own considerations and findings, this would still not render the decision reasoned in the sense of Rule 68(2) EPC, since this summary consists of mere citations of passages of documents (1), (2) and (3) without specifying any detailed information or feature disclosed therein.

6. Hence, the decision under appeal fails to set out the factual and legal considerations supporting the decision taken by the Opposition Division.

Due to the above deficiencies of the decision under appeal the reasons for the revocation of the patent-in-suit are opaque as the Board is left in the dark as to how the first instance came to its negative conclusion in respect of the subject-matter claimed. Hence, it would be left to the Board to provide for itself some

reasoning supporting that decision. This is just what

Rule 68(2) EPC requiring a decision to be reasoned is

designed to prevent.

7. For these reasons, in the Board's judgement, the decision under appeal which is based on such a deficient reasoning is not "reasoned" in the sense of Rule 68(2) EPC. This failure amounts to a substantial procedural violation requiring the decision under appeal to be set aside and the case to be remitted to the first instance. The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fee in the present case (Rule 67 EPC).

8. In these circumstances, the Appellant's and Respondent's conditional requests for oral proceedings do not apply, since the requests for oral proceedings were withdrawn by the Parties if the case was remitted to the first instance and the appeal fee was reimbursed.

9. When reconsidering the case, the Opposition Division will also have to consider the submissions filed during the appeal proceedings and to examine in particular the issue whether or not documents (1) and (2) are non-prejudicial disclosures within the meaning of Article 55 EPC.