G 0009/93 (Opposition by patent proprietor) of 6.7.1994

Summary of Facts and Submissions

I. European patent No. 223 659, for a rear cover for a motor vehicle and motor vehicle equipped therewith, was granted in 1989. Its two joint proprietors then filed notice of opposition under Article 99 EPC on the ground that the subject-matter of Claim 1 as granted did not involve an inventive step (Article 100(a) EPC), and requested that the patent be maintained in amended (limited) form on the basis of a new set of claims. In support of the admissibility of such self- opposition, they cited Enlarged Board of Appeal decision G 1/84 (OJ EPO 1985, 299) ruling that a notice of opposition against a European patent was not inadmissible merely because it had been filed by the proprietor of the patent. The Opposition Division took the view that the opposition, although admissible, was not well founded, and therefore rejected it under Article 102(2) EPC.

II. The joint proprietors appealed against the Opposition Division's decision, again requesting that the patent be maintained in amended form. The appeal was allocated to Board of Appeal 3.2.1 (as case No. T 788/90, OJ EPO 1994, 708). Then on 31 March 1993 the Enlarged Board of Appeal gave decision G 9/91 and opinion G 10/91 (OJ EPO 1993, 408, 420), querying in the Reasons whether the legal concept of EPC opposition proceedings underlying decision G 1/84 was correct. In these circumstances, Board of Appeal 3.2.1 considered that an important point of law had arisen, namely whether the ruling in case G 1/84 on the admissibility of self-opposition still applied.

On 28 October 1993 it therefore referred the following questions to the Enlarged Board of Appeal under Article 112(1)(a) EPC:

1. Given the Enlarged Board of Appeal's new interpretation in decision G 9/91 and opinion G 10/91 of the basis for the opposition procedure, can a European patent be opposed by its own proprietor?

2. If so, do the board of appeal's powers of review in such a case depend on the extent to which the patent was opposed in the notice of opposition?

III. In response to an invitation under Article 11a of the Rules of Procedure of the Enlarged Board of Appeal, the President of the EPO commented by letter of 30 March 1994 on the questions referred to the Enlarged Board. He expressed the view that given the Enlarged Board of Appeal's new interpretation in decision G 9/91 and opinion G 10/91 of the basis for the opposition procedure, a European patent could be opposed by its own proprietor.

IV. The proprietors of the patent in suit did not file any observations on the referred questions or on the comments made by the President of the EPO.

Reasons for the Decision

1. It is clear from the Reasons of the referring decision (see T 788/90, points 2 to 4) that as regards the admissibility of self-opposition Board of Appeal 3.2.1 found that the concept of EPC opposition proceedings set out in rulings G 9/91 and G 10/91 differed fundamentally from that in G 1/84. It was quite right: in G 9/91 and G 10/91 - in contrast to G 1/84 - the Enlarged Board held that in view of their special post- grant character, opposition proceedings under the EPC are in principle to be considered as contentious proceedings between parties normally representing opposing interests. In other words, they are inter partes proceedings. Obviously, this concept does not fit with the idea expressed in G 1/84 that opposition proceedings can be initiated by a single party (ex parte proceedings). In these circumstances, Board of Appeal 3.2.1 was entirely justified in asking whether the ruling in G 1/84 on the admissibility of self-opposition still applies.

2. The Enlarged Board of Appeal endorses the concept of opposition proceedings applied in G 9/91 and G 10/91. It has however also considered whether there might nonetheless be a legal basis for self-opposition under the EPC, as held by the Enlarged Board in G 1/84. Obviously, this depends mainly on how Article 99 EPC is interpreted.

3. It is clear from the Reasons for decision G 1/84 (see in particular points 3 and 6) that the Enlarged Board of Appeal then took the view that "any person" ("jedermann", "toute personne") in Article 99(1) EPC did not exclude the patent proprietor, who accordingly was entitled to oppose his own patent in accordance with the provisions of Article 99 EPC. The present Board does not share this interpretation. Out of context, the words "any person" do of course mean anyone at all. However, to interpret their meaning in a legal text such as the EPC, they have to be considered in the context of the EPC as a whole and in the light of its object and purpose.

Thus considered, and having regard in particular to the nature and purpose of the opposition procedure as provided for in Part V of the EPC, the words "any person" in Article 99(1) EPC can in the present Board's opinion only be reasonably interpreted as referring to the public at large which is being given the opportunity to challenge the validity of the patent in question. To include the patent proprietor in this concept appears artificial. In the present Board's view, the provisions of Part V of the EPC and the corresponding Implementing Regulations are clearly posited on the assumption that the opponent is a person other than the patent proprietor and that opposition proceedings are always inter partes (cf. in particular Articles 99(4) and 101(2) and Rule 57 EPC). Thus the present Board - in contrast to the decision in G 1/84 - holds that the patent proprietor is not covered by the term "any person" in Article 99(1) EPC and is therefore not entitled to oppose his own patent under that provision. The ruling in G 1/84 can thus no longer be followed.

4. Having said this, the present Board would like to comment on two particular issues addressed in the Reasons for decision G 1/84.

4.1 The Enlarged Board hearing case G 1/84 considered the question of self-opposition against the background that the EPC - unlike the Community Patent Convention (CPC), which however is not yet in force - contains no provision enabling the proprietor of a European patent to request limitation of his patent. It concluded that if he could not limit it during opposition proceedings he would have to fall back on such limitation proceedings as might be available under national law, which was bound to cause legal uncertainty, procedural delays and extra expense. The present Board takes the view that even if such disadvantages existed they would not serve to justify not applying Article 99 EPC as it stands, but would be a matter for the legislator to cure if they were considered as giving rise to serious problems.

4.2 In the Reasons for decision G 1/84 (cf. points 3 and 6), the Enlarged Board emphasised that the EPC's elaborate provisions for substantive examination and opposition are designed to ensure that as far as possible the European Patent Office grants and maintains only valid European patents. The President of the EPO, in his comments, has referred to these considerations. Needless to say, the present Board does not of course question this. However, as the Enlarged Board has pointed out in a similar context (G 8/91: OJ EPO 1993, 346, Reasons point 10.3), efforts to achieve this objective must remain within the framework of generally recognised procedural principles unless there are serious reasons for an exception. The same applies as regards interpretation of the EPC. The present Board takes the view that the aim of granting and maintaining only valid patents cannot be considered as a proper legal basis for interpreting Article 99 EPC as also covering self-opposition.

5. It follows from the foregoing that the first question put to the Enlarged Board in the present case must be answered in the negative. The second question thus becomes irrelevant.

6. This is the first time the Enlarged Board has found it necessary to modify the interpretation of the EPC it gave in an earlier decision. Obviously, so as not to jeopardise the continuity and predictability of application of the EPC, any such departure must be restricted to situations like the present where there are very clear reasons for not following the earlier interpretation.

6.1 In principle, any interpretation of the EPC by the Enlarged Board implies that the law has always been in conformity with that interpretation. However, on purely procedural issues there may be reasons of equity for not applying to pending cases the law as thus interpreted. In cases currently pending before the EPO and relying on decision G 1/84, which has now been followed for many years, obviously patent proprietors had every reason to expect that self-opposition would be considered admissible. In the present Board's opinion, it would be inequitable now to prevent them from continuing proceedings they embarked on in good faith and which cannot adversely affect the rights of any third party. Its ruling that, contrary to the earlier interpretation of the EPC, self-opposition is inadmissible, should therefore not be applied to notices of opposition filed before publication of the present decision.

ORDER

For these reasons it is decided that:

Question No. 1 referred to the Enlarged Board of Appeal is answered as follows:

A European patent cannot be opposed by its own proprietor.