| European Case Law Identifier: | ECLI:EP:BA:1986:T018584.19860408 | ||||||||
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| Date of decision: | 08 April 1986 | ||||||||
| Case number: | T 0185/84 | ||||||||
| Application number: | 80103148.5 | ||||||||
| IPC class: | B05B 9/03 B05D 1/02 |
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| Language of proceedings: | DE | ||||||||
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| Title of application: | - | ||||||||
| Applicant name: | BASF | ||||||||
| Opponent name: | - | ||||||||
| Board: | 3.2.01 | ||||||||
| Headnote: | After oral proceedings in connection with an opposition, the parties must be sent a communication pursuant to Rule 58(4) only if they cannot reasonably be expected to state their observations concerning the maintenance of the European patent in the amended form definitively during the oral proceedings (further to Decision T 219/83 of Board 3.3.1 dated 26 November 1985). | ||||||||
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| Keywords: | Communication pursuant to Rule 58(4) EPC in appeal proceedings | ||||||||
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Summary of Facts and Submissions
I. European patent application No. 80 103 148.5 was filed on 6 June 1980 claiming the priority of an earlier German application of 13 June 1979 and led to the grant of European patent 21 182 on 5 January 1983 with six claims, four of them (1, 3, 5 and 6) independent.
II. Opposition was filed on 4 October 1983 calling for the patent to be revoked as regards Claims 1, 2 and 5 on grounds of lack of novelty....
III. By decision of 3 July 1984 the Opposition Division rejected the opposition and maintained the patent as it stood, having ruled that the subject-matter of the independent claims was patentable and industrially applicable.
IV. The opponents appealed against this decision and paid the relevant fee on 2 August 1984. The statement of grounds, filed on 24 October 1984, may be summarised as follows: ...
V. The patentees replied on 18 November 1984 rejecting the points made by the opponents. ...
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. Formal objections to Claims 1 and 5 as they stand are not sustainable. They differ from Claims 1 and 5 of the patent as granted merely in a number of amendments, made in the interests of greater exactitude and clarity and supported by the documents as filed. ... The process as claimed in Claim 1 is therefore new compared to the state of the art.
7. The question then arises of whether the subject-matter of Claim 1 is obvious from the state of the art. ...
7.5 The process as claimed in Claim 1 hence involves an inventive step (Article 56 EPC). ...
9. The patent can therefore be maintained with Claims 1 and 5 as they stand, dependent Claim 2 directed to a special embodiment of the invention as claimed in Claim 1 and the other claims as contained in the patent as granted, which are not contested, and the relevant description and drawings.
10. The Board decided not to follow the procedure prescribed in Rule 58(4) EPC for informing the parties. Under this rule, which pursuant to Rule 66(1) EPC also applies in appeal proceedings, the Board of Appeal must, before deciding on the maintenance of a European patent in its amended form, inform the parties that it intends to maintain the patent as amended and invite them to state their observations within a period of one month if they disapprove of the text in which it is intended to do so.
The Board has maintained the patent with Claims 1 and 5 as submitted at the oral proceedings, which differ from Claims 1 and 5 of the granted patent merely as regards a number of amendments made in the interests of exactitude and clarity. Slight as these amendments are, Rule 58(4) EPC, taken literally, requires that the parties be sent a communication in accordance with the Rule 58 procedure.
The Board, however, shares the view taken by Board 3.3.1 in its Decision of 26 November 1985 (T 219/83) that it is as much the intent and purpose as the literal wording of Rule 58(4) that have to be observed in an appeal against a decision of the Opposition Division. The intent and purpose of this rule demand that following oral proceedings in an appeal against an opposition decision, the parties be informed and invited to state their observations only if they cannot reasonably be expected to state their definitive observations on amendment of the patent at the oral proceedings themselves.
Claims 1 and 5 were amended solely in the interests of greater exactitude and clarity. The purport of the amendments would have been quite evident to the parties, who were represented by qualified patent attorneys and who could therefore reasonably be expected to state their definitive observations at the oral proceedings. The parties' representatives did not in fact give any indication that they needed some time to consider the changes whether in the form of an interruption of proceedings or even of a period during which to reply in writing. Nor did the Board itself consider this to be necessary. It was therefore correct not to follow the procedure for informing the parties laid down in Rule 58(4) EPC.
ORDER
For these reasons it is decided that:
1. The contested decision is set aside.
2. The case is remitted to the department of first instance, which is ordered to maintain the European patent as granted, Claims 1 and 5 being replaced by the new claims submitted at the oral proceedings.
