T 0213/85 (Grounds for appeal II) of 16.12.1986

Summary of Facts and Submissions

I.On 22 September 1982, European Patent No. 4002 was granted in respect of European patent application No. 79 100 533.3, filed on 23 February 1979 with Swiss priority dating from 3 March 1978.

II. Two Opponents filed opposition to grant of the patent: one (Opponent I) alleged lack of inventive step, referring to previously ignored state of the art; the other (Opponent II) invoked lack of novelty, since the product as claimed was apparently commercially available even before the relevant priority date.

III. By decision of 21 June 1985, the Opposition Division dismissed Opposition I on the grounds that it was admissible but unfounded; Opposition II was rejected as inadmissible. It is not necessary to go into the reasons for the rejection of Opposition I here, as no appeal has been filed against it. The rejection of Opposition II as inadmissible was based essentially on the fact that, when disputing novelty, it is incumbent upon the Opponent to demonstrate, within the opposition period, the identical nature of the subject of the patent and the state of the art so fully that observations thereon can finally be made. This, Opponent II failed to do, since from the evidence stated it was not possible to recognise any relationship between the product as claimed and the product therein described; in particular, it could not be deduced that they were identical.

IV. On 16 August 1985, Opponent II (the present Appellants) filed an appeal against this decision and paid the prescribed fee. In a letter received on 21 October 1985 the Appellants submitted, amongst other things, a four-page memorandum headed "Mémoire de recours" statement of appeal and a series of new pieces of evidence, detailed in a list submitted at the same time, which were now supposed to show that the products as claimed and the products available on the market before the priority date of the disputed patent were identical. This was explained at length in the "Mémoire ...", but without going into the arguments of the contested decision summarised in the preceding paragraph.

V.In an interlocutory decision, the Board drew attention to doubts which existed as to whether these grounds for appeal were sufficient for its admissibility. The Appellants did not make any further observations on this within the period allowed for comment.

Reasons for the Decision

1.The appeal complies with Articles 106 and 107 and also with sentences 1 and 2 of Article 108 and Rule 64 EPC. Its admissibility therefore depends solely on whether the "Mémoire ..." received within four months after the date of notification of the contested decision contains a "statement setting out the grounds of appeal" within the meaning of Art. 108, sentence 3.

2.From the direct lexical meaning of the phrase "statement setting out the grounds of appeal" used in Art. 108, sentence 3, EPC, it is clear that, in order to satisfy the criterion for admissibility in the statute quoted, grounds for an appeal must state why in the Appellants' view the contested decision cannot be valid, or - as it says in sentence 2 of the Headnote to Decision T 220/83, OJ EPO 8/1986, p. 249 - "the legal or factual reasons why the decision should be set aside". The grounds for appeal may therefore not be confined to an assertion that the contested decision is incorrect, for in that case it would say no more than was already implicitly stated by the fact of the appeal being filed.

3.In the decision quoted, where a specific document had played a crucial role at the first instance, it was stipulated for the admissibility of the appeal that "appellants invoking this document are obliged to analyse it in detail when setting out the grounds for their appeal" (point 4, lines 19 to 23 loc. cit., p. 251). It follows generally that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision. Here it is not a matter of whether the arguments put forward are actually effective, i.e. are able to produce the desired legal consequence, but rather that circumstances are demonstrated which support the view held and which by their nature may in principle be considered to upset the reasons for the decision given by the department of first instance.

4.In the case in question, the department of first instance dismissed Opposition II as inadmissible on the grounds that details which in its view ought to have been furnished within the nine-month opposition period had been omitted at the time. Consequently, no decision on the matter, i.e. on the legal validity of the patent, was given to the Appellants; the contested decision is restricted rather to the procedural question of the admissibility of the opposition. The Appellants have now indeed, within the framework of their statement of appeal, possibly made up for what in the view of the department of first instance was missing by submitting new evidence; but they did not even assert, let alone try to substantiate, that they had in fact done what could be legitimately required of them within the nine-month opposition period; their appeal had therefore been admissible and consequently had wrongly been dismissed. In other words, the Appellants have invoked non-patentability of the subject-matter of the patent and have omitted to dispute the main ground for the contested decision, i.e. the alleged lack of adequate substantiation of the opposition. Such disputation is neither expressly contained in the grounds for the appeal, nor can the Appellants' arguments therein be construed in that direction. They have not therefore given grounds for their appeal within the meaning of Art. 108, sentence 3; for if an opposition has been dismissed on the grounds of insufficient substantiation and the grounds for appeal merely dispute patentabilitiy without elaborating on the admissibility of the opposition, the appeal is inadmissible for lack of adequate substantiation.

5.In the absence of an admissible appeal, it is neither possible to check whether the Opposition Division assessed the question of admissibility of the opposition appropriately, nor to examine whether the grounds for opposition now submitted would adversely affect maintenance of the patent.

ORDER

For these reasons, it is decided that

The appeal is rejected as inadmissible.