G 0001/88 (Opponent's silence) of 27.1.1989

Summary of the Procedure

The point of law and its legal background

I. By decision dated 9 March 1988 (OJ EPO 1988, 341) concerning appeal case T 271/85 the following point of law was submitted to the Enlarged Board of Appeal: Is the appeal of an opponent admissible in a case where, following notification of the communication pursuant to Rule 58(4) EPC, he fails to make any observations within one month if he disapproves of the text in which it is intended to maintain the patent?" This point of law emerged from the way in which Rule 58(4) EPC was applied by the EPO department of first instance and has also arisen in other appeal proceedings.

II. According to Article 102(1) to (3) EPC a decision on an opposition to a European patent can involve revocation of the patent, rejection of the opposition or maintenance of the patent as amended, this last case requiring the publication of a new European patent specification. Under Article 102(3)(b) EPC a prerequisite for maintenance of the patent as amended is that the printing fee be paid. The request for payment of the fee may, under Article 65(1) EPC, signal the start of the time limit for filing translations in the Contracting States. With these regulations in mind, the EPO very early on adopted the device of an interlocutory decision, for which there is no express provision, in order to establish in the first place the text of the amended specification. Only after this interlocutory decision has come into force are the fee for printing and a translation of the claims in the other official languages requested pursuant to Rule 58(5) EPC. Once these requirements have been fulfilled what is then a non-appealable final decision on maintenance of the patent as amended is given and the new patent specification is published.

III. A decision to maintain the European patent - even an interlocutory decision - can of course only be given if there is a text "submitted or agreed" by the patent proprietor pursuant to Article 113(2) EPC. In that connection Article 102(3)(a) EPC states that it must be established, "in accordance with the provisions of the Implementing Regulations", that the patent proprietor approves the text. It has accordingly been standard practice for the EPO's opposition divisions always to proceed in accordance with the relevant Rule 58(4) EPC, even where the text has already been "submitted or agreed" by the patent proprietor during the proceedings and rejected by the opponent.

IV. By virtue of Rule 66(1) EPC, the Boards of Appeal too were soon faced in their own proceedings with the question of whether and when they should apply Rule 58(4) EPC, particularly as decisions usually had to be taken after oral proceedings, and the text of the patent in its limited form had been "submitted or agreed" by the patent proprietor in the course of the proceedings and had also been discussed with the opponent. Decision T 219/83 of 26 November 1985 (OJ EPO 1986, 211) states that the parties must be informed and invited to state their observations with regard to the amended form of the European patent in accordance with Rule 58(4) EPC "only if they cannot reasonably be expected to do so definitively during the oral proceedings". This was confirmed by another Board in decision T 185/84 (OJ EPO 1986, 373). A number of decisions followed in which - in each case in special circumstances - the application of Rule 58(4) EPC was likewise dispensed with. Decision T 390/86 of 17 November 1987 (OJ EPO 1989, 30) went so far as to state that when Rule 58(4) EPC was applied it was merely a matter of approving "the text" and not of presenting substantive observations on the maintenance or revocation of the patent itself (op. cit., Reasons, 3.2).

V. The EPO departments of first instance, on the other hand, would seem to have always applied Rule 58(4) EPC, irrespective of any requests and observations already made by the parties concerned. The patent proprietor is therefore asked to make observations even if the text is one he has requested himself. The opponent, who generally desires revocation of the patent pure and simple, is invited to state his observations on a limited text, even if he has already let it be known that he does not object to the limitation as such, i.e. he does not see it as an inadmissible addition to the subject-matter. The words "in accordance with the provisions of the Implementing Regulations" in Article 102(3)(a) are thus understood by the departments of first instance to mean that the observations of the parties must always be obtained, irrespective of their positions as documented in the file and the stage reached in the proceedings, by applying Rule 58(4) EPC. In the early years, however, the opponent's silence was not interpreted as agreement to the maintenance of the patent in a limited form, thereby denying him the possibility of claiming that he had been "adversely affected" within the meaning of Article 107 EPC (cf. Information from the EPO: "Opposition procedure in the EPO" in OJ EPO 1981, 74, and earlier versions of the Guidelines). This interpretation was presented for the first time in a footnote to Legal Advice No. 15/84 concerning main and subsidiary requests (OJ EPO 1984, 491, 495) and after that in the new March 1985 edition of the Guidelines (D-VI, 6.2.1). The following passage accordingly appears at the end of the standard letter "Communication pursuant to Rule 58(4) EPC" (EPO Form 2325.3): An opponent who expresses no objections to the text communicated is not adversely affected by the patent being maintained as amended and hence is not entitled to appeal against the latter decision (Article 107, first sentence, EPC)."

VI. This interpretation was confirmed in decision T 244/85 of 23 January 1987 (OJ EPO 1988, 216), which states as follows: An appeal by an opponent who has not notified his disapproval of the maintenance of the patent in the amended form within the period of one month laid down in Rule 58(4) EPC is inadmissible because he cannot claim to have been adversely affected." Essentially, what has to be decided in the present proceedings is whether the Enlarged Board of Appeal can endorse this legal interpretation.

VII. In appeal case T 271/85 before Technical Board of Appeal 3.3.1 the question decided by Technical Board of Appeal 3.3.2 in appeal case T 244/85 (see VI. above) again arose. The first-named Board submitted this point of law to the Enlarged Board of Appeal. In its decision on the case before it (OJ EPO 1988, 341) Board 3.3.1 explained that in conformity with decision T 244/85 it considered the appeal to be inadmissible. Nevertheless, it was submitting the point of law because it was of fundamental importance.

VIII. In the proceedings before the Enlarged Board of Appeal the parties to the T 271/85 appeal proceedings were given the opportunity of expressing their views and presenting requests in accordance with Article 112(2) EPC. The representative of the appellants (opponents) had already made extensive legal submissions in the proceedings before the Board of Appeal. He did not wish to make any further observations and requested oral proceedings only for the event that the Enlarged Board of Appeal should be inclined to reject his appeal as inadmissible. The respondents (patent proprietors) referred the Enlarged Board to their previous observations and maintained their request for the appeal to be rejected as inadmissible. However, they emphasised that what was of general concern to them was that where interlocutory decisions to maintain European patents in amended form were given, the invitation pursuant to Rule 58(5) EPC should not be sent to the patent proprietor until the interlocutory decision had become final. This was above all necessary because under Article 65(1) EPC in certain Contracting States this invitation signalled the start of the period for filing translations.

Reasons for the Decision

1. The point of law to be decided was referred to the Enlarged Board of Appeal with decision T 271/85 in accordance with Article 112(1) EPC.

2. It will be necessary to look at decision T 244/85 again in order to settle the point of law in question. Starting out from a literal interpretation of Rule 58(4) EPC, in that decision (point 8 of the Reasons) the opponents' silence is taken to mean, not just that they do not see in the text communicated an unlawful extension of the subject-matter within the meaning of Article 123(2) and in particular (3) EPC but as abandonment of their previous position, namely that the patent should be revoked. 2.1 This construction of silence is based primarily on the dictum qui tacet consentire videtur ("he who is silent is deemed to consent"; Digesten 19, 2, 13 11). This assumes that, from the nature and wording of the communication pursuant to Rule 58(4) found in the standard form (see V. above), a response may reasonably be expected from the opponents in the event of their disapproving the text. It has not therefore been overlooked that the Latin dictum is subject to the proviso ... ubi loqui debuit ("... when he ought to have spoken"; Digesten, loc. cit.). where the opponents adhere to their previous position - normally revocation of the patent - they thus have to submit observations according to this line of argument which is lent substance by the wording of Rule 58(4) EPC. The formulation "... shall invite them to state their observations ..." can be understood to mean that not only may they make observations but observations are called for and expected if the opponents maintain their request for relief (normally revocation). It has to be said in decision T 244/85's favour that this interpretation is supported by the fact that the opponents are expected to approve the amended "text of the patent", which can be understood to mean more than just the wording of the text, namely the patent as such with its substantive content (see also Article 113(2) EPC). 2.2 On the other hand, Rule 58(4) EPC can also be given a strictly literal interpretation to the effect that it is merely a matter of the parties' approval of "the text". In other words the opponent is being asked in particular whether he considers that the text inadmissibly extends the subject-matter (infringement of Article 123(2) or (3) EPC). According to this line of reasoning the opponent is simply being given an opportunity to raise objections to the text as such; he is not being required to reaffirm his previous requests. The wording of Rule 58(4) EPC was interpreted in this way in decision T 390/86 (see IV. above). Within Board of Appeal case law we therefore have two different interpretations, which shows that Rule 58(4) EPC cannot reliably be interpreted on its wording alone. 2.3 In the literature too, doubts have been expressed about interpreting Rule 58(4) EPC on the basis of its wording (see Van Empel, The Granting of European Patents, Leyden 1975, No. 481, page 224). According to that source, Rule 58(4) does not reflect the true situation in law because the patent proprietor and opponent are legally in quite different positions and their objections are therefore different in nature and have different legal consequences. In the case of objection by the patent proprietor the proceedings not only may be continued as stated in Rule 58(5) EPC, but in view of Article 113(2) EPC they must be continued. In the case of objection by the opponent, on the other hand, the proceedings may be continued if what he has to say is felt to be significant. Apart from that an objection by the opponent carries no weight. 2.4 The ambiguous wording of Rule 58(4) EPC and the foregoing remarks would at first sight, then, seem to indicate that the text of Rule 58(4) EPC cannot be construed as meaning that the opponent is required to state his objections. To regard silence as betokening consent would be tantamount to withdrawal of the opposition with consequent surrender of the right to appeal. Surrender of a right cannot, however, be simply presumed: A jure nemo recedere praesumitur.

3. Deeming silence to be equivalent to surrender would also be inconsistent with the logic of how the Convention operates, since it would be at odds with its basic drafting philosophy (3.1) and with the way in which it deals with losses of rights (3.2). 3.1 Where the legal consequence of an omission is to be a loss of rights, this is expressly stated - in line with the Convention's general drafting philosophy. There are numerous examples of cases where loss of rights is based on an assumption. Article 122(1) and Rule 69(1) also assume that loss of rights as a legal consequence is expressly stipulated. 3.2 To impose loss of rights as a penalty for an opponent's silence in connection with Rule 58(4) EPC is also scarcely compatible with the logic of the Convention: Rule 69(1) and (2) EPC would have to be applied before the formalities officer could issue his decision maintaining the patent in the amended form. The applicability of Article 122 EPC would have to be considered in the light of decision G 1/86 "Re-establishment of rights of opponent/VOEST" (OJ EPO 1987, 447).

4. It also has to be remembered that under Article 164(2) EPC the Implementing Regulations must always be interpreted in the light of the Convention. Consequently, the interpretation of the Implementing Regulations which corresponds most closely to the principles of the Convention prevails. It is a principle of the Convention, however, that parties' rights are safeguarded by the possibility of appeal to at least one higher-ranking tribunal. In the Contracting States this principle is even constitutionally guaranteed. The Implementing Regulations should therefore be construed in such a way that Rule 58(4) is not allowed to interfere with the right of appeal under Articles 106 and 107 EPC.

5. The teleological interpretation, that is to say interpretation in the light of the sense and purpose of the procedure under Rule 58(4) EPC, leads to the same goal. It enables possible rulings on the specific point of law to be tested against the overall context of the Convention. 5.1 The interpretation of Rule 58(4) EPC which results in an opponent's forfeiting his right to appeal by virtue of his silence follows from the department of first instance construing the procedure pursuant to Rule 58(4) EPC as a mandatory formality, terminating the proceedings, which must always be performed if the patent is to be maintained as amended under Article 102(3) EPC. The following considerations justify doubts on this question. 5.1.1 First of all, as far as the patent proprietor is concerned, if he himself has proposed and expressly requested the new version of the patent but no longer stands by his request, it seems doubtful whether he needs to be asked again to voice his dispproval. 5.1.2 As regards the opponent, one has to ask what purpose is served by a formality terminating the proceedings if, by filing the opposition itself and in his repeated submissions and requests, the opponent has made it abundantly clear that his prime aim is simply to have the patent revoked and if he has besides had sufficient opportunity to say whether he regards the text in which the patent is to be maintained as extending the subject-matter inadmissibly. 5.1.3 Since it is the normal practice under Article 116(4) EPC for the decision to be delivered during oral proceedings, where these are held, one likewise has to ask what purpose is served, in the case of the patent being maintained in a limited form, by postponing its delivery in the interests of bringing the proceedings to a close by means of a written formality, when the procedural rights of the parties have clearly been fully safeguarded. 5.1.4 The further implications of applying Rule 58(4) EPC in this way also give cause for doubt. If the opponent is not content with a simple objection but also makes comments on the text (cf. Rule 58(5) EPC) or even submits new relevant citations (cf. Article 114(2) EPC), the proceedings can be continued and the whole Rule 58(4) EPC procedure has to be repeated. Just applying this rule once requires a good four months. The opponent would be in a position to delay conclusion of the proceedings considerably, since each new correction to the text would result in a new communication pursuant to Rule 58(4) EPC and new relevant citations could even mean that the proceedings would have to be resumed. 5.2 The travaux préparatoires, on the other hand, show that it was not the legislator's intention for Rule 58(4) EPC to be applied as it has been by the EPO's departments of first instance. 5.2.1 It is clear from the "Report on the 11th Meeting of Working Party I from 28 February to 3 March 1972 in Luxembourg" (BR/177/72 dated 13 April 1972, page 29, point 60) that in the same way as with Article 97 and Rule 51 EPC it had also been the intention to clarify Article 102(3) EPC by means of a rule stating "the legal consequences of the proprietor of the patent (or the opponent) not being in agreement with the amended form of the patent". It goes on to say: "Some delegations considered that only the proprietor of the patent should have the right to object to the grant of the patent; that the opponent should have no such right; but that the opponent should be able to appeal against the grant of the patent in its final form. Other delegations, on the other hand, were in favour of the opponent ... also having the right to object. The Working Party agreed on a compromise solution whereby the European Patent Office is entitled, but not obliged, to continue the opposition proceedings where a party expresses disapproval of the text in which it is intended to maintain the patent." 5.2.2 According to the travaux préparatoires, Rule 58(4) EPC was therefore designed primarily with the patent proprietor in mind and only incidentally the opponent. As regards the patent proprietor, the rule was intended to lay down the procedure to be followed where the Opposition Division intends to maintain the patent with an amended text to which the patent proprietor has not yet given his approval. This is also evident from the expression "right to object". If the amended text emanates from the patent proprietor himself a "right to object" no longer makes sense. Application of Rule 58(4) EPC is therefore superfluous. 5.2.3 Nor does restricting the application of Rule 58(4) in this way contravene Article 102(3) EPC. The latter article does say that it must be established, "in accordance with the provisions of the Implementing Regulations", that the proprietor of the patent approves the text. However, the sense of this wording, which makes no mention of the opponent, can hardly be that the patent proprietor's approval needed under Article 113(2) EPC has to be obtained again "in accordance with the provisions of the Implementing Regulations" when it has already been given. Other procedural provisions in the Convention also refer in this way to the Implementing Regulations, (Articles 91(2), 96(2), 97(2)(a), 101(2) and 110(2) EPC for example). That does not mean to say, however, that a rule in the Implementing Regulations still has to be complied with when its legislative purpose has already been fulfilled. Procedural rules to bring about compliance with statutory requirements are used only if the requirements have not yet been met (cf. for example decision T 317/86 "Title of invention/SMIDTH" (OJ EPO 1988, 464; headnote). 5.2.4 As regards the opponent, it has to be said that he does of course have the right under Article 113(1) EPC to comment on any new wording of the patent, especially as to whether it extends the subject-matter inadmissibly within the meaning of Article 123(2) or (3) EPC. In the context of the application of Rule 58(4) EPC, however, hearing of the opponent is a purely incidental matter of routine. If this rule is applied, thus giving the patent proprietor an opportunity to object to the text, the opponent is also given the chance to state any objections that he may have. As pointed out in the literature (see 2.3 above), an objection from the opponent does not, however, prevent closure of the proceedings. It follows, therefore, that he is not obliged to voice his objections. He merely has an opportunity to object to the proposed text, for example on the grounds that it extends the subject-matter inadmissibly. This opportunity should be additional to the opponent's right of appeal - as is clear from the extract from the travaux préparatoires - but on no account result in its loss.

6. From the procedural provisions of the Convention on which it is based - Articles 113(1) and (2) and 102(3) - and in conjunction with the travaux préparatoires, Rule 58(4) EPC can therefore also be interpreted generally by reference to the sense and purpose attributed to it in the Convention. Accordingly, Rule 58(4) EPC does not need to be applied when the patent proprietor has already given his express approval of the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC. Irrespective of this, the opponent must have had - or be given - sufficient opportunity, according to the circumstances, of commenting on the new text. He can be given this opportunity, especially where the written procedure is being used, through the application of Rule 58(4) EPC.

7. From the literal wording of Rule 58(4) EPC, its interpretation by reference to the general logic of the Convention and application of the principle that the Implementing Regulations must be construed in the light of the Convention, the Enlarged Board of Appeal therefore concludes that the question referred to it must be answered in the affirmative. It does so inter alia because it sees the sense and purpose of Rule 58(4) EPC differently from the departments of first instance. The Board understands, however, how the departments of first instance arrived at their interpretation of this rule - based on the practice of issuing interlocutory decisions where a patent is maintained in amended form. That practice, for which there is no express provision, makes it possible to wait until the interlocutory decision can no longer be impugned, thereby avoiding a situation where the patent proprietor must incur expenses twice for the new specification. This was also put forward by the respondents (patent proprietors) in the present case as the basis for their concern (see VIII. above). The invitation pursuant to Rule 58(5) EPC to pay the printing fee and to file translations must not be sent until the interlocutory decision has become final. This stage of the proceedings can quickly be reached with the help of the interpretation of Rule 58(4) EPC given here, since following oral proceedings the decision can usually be pronounced immediately and formulated in writing without delay. In written proceedings, the issue of a communication to the parties can also be used to give the opponent the necessary opportunity (cf. 6 above) to comment on the new text in which the Opposition Division intends to maintain the patent. In contrast, applying the rule as a mandatory formality terminating all proceedings does not result in any real rationalisation. The Enlarged Board of Appeal therefore considers its interpretation of Rule 58(4) EPC, for this reason too, to be the one appropriate.

ORDER

For these reasons, it is decided that:

The point of law submitted to the Enlarged Board of Appeal is to be settled as follows:

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.