T 0244/85 (Aluminium trihydroxide) of 23.1.1987

Summary of Facts and Submissions

I. Patent No. 0 011 667 was granted on 20 July 1982 in respect of an application filed on 23 April 1979 claiming priority of a German application dated 2 December 1978.

II. Mention of the grant of the European patent was published in the Patent Bulletin on 8 September 1982. The appellants filed opposition by telex on 8 June 1983 - this was confirmed in writing in due time - and requested that the patent be revoked on the grounds that the solution to the problem did not involve an inventive step (in the light of DE-C-868 601, which was cited subsequently).

III. In oral proceedings on 11 October 1984 the patent proprietors requested before the Opposition Division that the patent be maintained in the amended form, the opponents requesting that it be revoked. When the Division had discussed the matter the Chairman informed the parties that it was intended to maintain patent No. 0 011 667 with amended claims and corresponding adjustments to the description, and that the communication under Rule 58(4) EPC would be sent with the amended documents.

IV. The communication under Rule 58(4) EPC was accordingly sent on 30 October 1984, inviting the parties to state their observations within a period of one month if they disapproved of the text in which it was intended to maintain the patent. The communication also contained the following remarks: "1. If within the specified period the patent proprietor raises no objections to the text in which the patent is to be maintained and if the opponent's objections do not require any amendment of that text, the Opposition Division will issue an interlocutory decision in accordance with Article 106(3) EPC stating that, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC. A separate appeal is allowed against this decision.

2. If the proprietor of the patent raises objections within the specified period to the text in which the patent is to be maintained, opposition proceedings are continued. If appropriate, the European patent is revoked. Appeal may be filed against this decision.

3. If within the specified period none of the parties raises objections to the text in which the patent is to be maintained, the request under Rule 58(5) EPC is sent. If it is complied with, the Opposition Division decides to maintain the patent as amended (Article 102(3) EPC).

4. An Opponent who raises no objections to the text communicated is not adversely affected by the patent's maintenance in the amended form and is thus no longer entitled to appeal against the decision (Article 107, first sentence, EPC)."

V. After the one-month period had expired the opponents informed the European Patent Office in a letter dated 6 December 1984 and received on 12 December 1984 that they disapproved of the patent's maintenance in the amended form, repeating their request that it be revoked in its entirety.

VI. In a letter dated 9 January 1985 the opponents were informed under Rule 69(1) EPC that their letter of 6 December 1984 had arrived late and could therefore no longer be taken into account. The proceedings would accordingly be continued under Rule 58(5) EPC. If the opponents considered that this finding was inaccurate they could within two months after notification of the communication apply for a decision on the matter by the European Patent Office under Rule 69(2) EPC. No such decision was applied for.

VII. The communication under Rule 58(5) EPC was sent on 16 April 1985. The patent proprietors then paid the relevant fees and filed the requested translations of the claims.

VIII. On 5 August 1985 the formalities officer concerned delivered the decision to maintain European patent No. 0 011 667 as amended under Article 102(3) EPC.

IX. The appellants contested the maintenance of the European patent in a telex dated 29 August 1985 and on 3 October 1985 filed an appeal by telex, which was confirmed in writing, requesting that the decision be set aside, patent No. 0 011 667 revoked and the appeal fee reimbursed. The appellants argued essentially that an opponent suffered no loss of rights by not reacting to the communication under Rule 58(4) EPC. Silence on the part of an opponent could not be interpreted as implying approval of the most recent text of the claims, but at most as a renunciation of any further right to be heard. By remaining silent an opponent could not cease to be a party to opposition proceedings nor, consequently, lose the entitlement to appeal.

X. The appellants requested in a telex dated 3 December 1985 and confirmed in a letter dated 16 December 1985, that the points of law relevant to a decision on the appeal be referred to the Enlarged Board of Appeal. At the same time they requested oral proceedings, but withdrew that request in a telex dated 15 January 1987 which was confirmed in a letter dated 16 January 1987. They requested that a decision be taken on the basis of the documents in the file.

Reasons for the Decision

1. To be admissible an appeal must comply with Articles 106 to 108 and Rule 64(b) EPC. An appeal which does not must be rejected as inadmissible unless each deficiency has been remedied before the relevant time limit laid down in Article 108 has expired (Rule 65(1) EPC).

2. In the present case the Board of Appeal objected that the appellants and opponents were not adversely affected within the meaning of Article 107 EPC by the decision to maintain the contested patent in the amended form.

3. A party is adversely affected within the meaning of Article 107 EPC if the decision fails to meet that party's wishes. The appellant had filed their opposition dated 8 June 1983 in order to have the contested patent revoked. Given the appellants' objective, the contested decision unquestionably affects them adversely since it maintains the European patent, even if in an amended form.

4. In order to establish that a party has been adversely affected, however, it is not sufficient to compare that party's original objective with the substance of the decision; rather, the party must have been so affected at the time when the contested decision was delivered and the appeal filed. A party who expresses his approval of a proposed decision during proceedings can no longer contest that decision on the grounds that he has been adversely affected, even though he originally submitted requests which are not met by the decision.

5. The Board believes the appellants made their approval of the decision to maintain the patent sufficiently clear before it was delivered.

6. Approval of the substance of a proposed decision need not necessarily take explicit form: silence is tantamount to assent even though the party concerned is expected to comment if he does not approve of the intended decision. If under such circumstances a party does not make any statement he implies his approval by this very fact.

7. The opponents and the patent proprietors were represented at oral proceedings on 11 October 1984, on which occasion the Opposition Division informed the parties that it intended to maintain the patent in the amended form and that a communication would be sent with the amended documents under Rule 58(4) EPC, the parties having an opportunity to state their observations on that communication within a period of one month. This communication under Rule 58(4) EPC was sent on 30 October 1984 together with the documents in the amended form. In the communication the parties were invited under Rule 58(4) EPC to state their observations within a period of one month of receiving it if they disapproved of the text in which it was intended to maintain the patent. The parties were also told that if within the period of one month none of them raised objections to the form in which it was intended to maintain the patent the request under Rule 58(5) EPC would be sent. The opponents, who are now the appellants, were told that they were not adversely affected by the maintenance of the patent in the amended form if they had not raised any objections to the text communicated to them.

8. Since both patent proprietors and opponents raised no objections within the period of one month the Opposition Division could only assume that both parties approved of the patent's being maintained in the amended form. The fact that nothing was heard from the parties is sufficient to indicate their approval. Where the circumstances may be expected to call for a reaction, silence can be interpreted as a sign of agreement. This accords with the principle of Roman law which says "Qui tacet consentire videtur", a maxim with particular force in the present context in so far as the European Patent Convention in Rule 58(4) expressly invites the parties to state their observations if they disapprove of the text in which it is intended to maintain the patent. Anyone who fails to respond to such a clear invitation anchored in the law is rightly treated as though he had agreed.

9. In the comparable case of Rule 51(4) EPC the Legal Board of Appeal has already decided that approval is indicated by failure to state positive disapproval (cf. "Inadmissible appeal/CHUGAI SEIYAKU", J 12/83, OJ EPO 1985, 6). Here, too, the applicant does not have to state his approval explicitly: it is inferred from his having paid the fees for grant and printing, filed a translation of the claims and not stated his disapproval of the grant of the European patent in the proposed form.

10. It may thus be concluded that by not stating their disapproval within the set period of one month the appellants, who at that time were the opponents, implied their approval of the intended maintenance of the European patent in the amended form. When the said period had expired the Opposition Division was therefore entitled to take that approval for granted in the rest of the proceedings.

11. This state of affairs is not affected by the then opponents' having stated in their letter of 6 December 1984 that they disapproved of the intended maintenance of the patent. This letter was not received until the period of one month under Rule 58(4) EPC had expired, and since it had elapsed without upshot the opponents' implied agreement with the maintenance of the patent had become a fact, as already stated above. From a procedural point of view this implied agreement cannot be treated differently from explicit agreement. But having once signified agreement a party to proceedings is bound by it and cannot declare it null and void as he sees fit; this applies at least to procedural statements such as the present one which determine the course of proceedings. Accordingly, disapproval of the patent's maintenance stated after the period had expired could not cancel the agreement to the intended maintenance which had been implied by the time the period expired.

12. Opponents are rightly obliged to stand by their agreement once given. There is no reason why in this respect they should be treated differently from patent proprietors. Both are sent the communication under Rule 58(4) EPC with the invitation to state their observations within a period of one month if they disapprove of the text in which it is intended to maintain the patent. Once the period has expired the patent proprietor cannot rescind his implied consent, for example because of an error (J 12/83, OJ EPO 1985, 6; point 6 on pp. 9/10 with regard to the applicant in the case of Rule 51(4)). There is no reason why an opponent should be treated differently, particularly as his attention is drawn to the consequences of either reacting or failing to do so within the period of one month laid down in the communication under Rule 58(4) EPC. He is expressly told that an opponent who raises no objections to the text of the patent as communicated is not adversely affected by the patent's maintenance in the amended form and that he is consequently no longer able to appeal against that decision.

13. Since the opponents are thus given unambiguous and detailed information in the communication under Rule 58(4) EPC, they cannot argue that the period of one month laid down therein does not apply to them. It is not asking too much of an opponent that he should submit his objections to the limited maintenance of the patent he is contesting within that period. Doing so gives him ready access to the Board of Appeal: if his objections do not justify the Opposition Division in changing the text communicated, it delivers an interlocutory decision under Article 106(3) EPC to the effect that the patent and the invention to which it relates meet the requirements of the EPC following the amendments made by the patent proprietor in opposition proceedings. Separate appeal is allowed against this decision - the opponent is informed accordingly in the communication under Rule 58(4) EPC - so that if he disapproves of the Opposition Division's maintenance of the patent in the amended form he can always have that decision reviewed by the Board of Appeal.

14. The fact that an opponent's appeal is inadmissible if he fails to notify his disapproval within the period of one month under Rule 58(4) and cannot therefore claim to have been adversely affected does not make it unreasonably difficult to obtain access to the Board of Appeal. It would suffice for him to state clearly during the period in question that he still disapproves of the maintenance of the patent in the amended form.

15. The Board would nevertheless be prepared to overlook this minor formal requirement if it did not have the laudable purpose of benefiting all users of the European patent system. There can be no doubting that it greatly increases the efficiency of the examining bodies, and particularly the Opposition Divisions, of the European Patent Office: if none of the parties raises objections within the period laid down in Rule 58(4) EPC, the Opposition Division as the decision-making body does not need to concern itself with the proceedings any longer because they will be dealt with by formalities officers (cf. Notice of the Vice-President Directorate-General 2 of the EPO dated 15 June 1984, OJ EPO 1984, 319). That applies not only to the communication to the patent proprietor under Rule 58(5) EPC but also to the decision to maintain the European patent as amended under Article 102(3) EPC. The number of decisions by formalities officers under Article 102(3) EPC is substantial. If decisions could still be appealed against after the period of one month under Rule 58(4) EPC had expired without result, those decisions would also have to be delivered, together with reasons, by the Opposition Division, which is a multi-member body. Clearly that would cause the Opposition Divisions a large amount of extra work because they would be obliged - unnecessarily - to deliver reasoned decisions. Apart from being uneconomical this would also diminish the incentive to the parties to reach agreement independently of opposition proceedings if the patent proprietor were also awaiting a reasoned decision involving a critical examination of the patentability requirements.

16. The decision on limited maintenance is preceded by the communication under Rule 58(5) EPC in which the patent proprietor is requested to file translations of the amended claims and to pay the fee for printing. This communication also marks the commencement of the minimum period for filing translations of the amended text in the Contracting States under Article 65(1), second sentence, in conjunction with Article 102(3)(b) EPC. Having these things done in the Contracting States costs applicants a large amount of money, especially if a representative is used or a certified translation has to be submitted. Moreover, the investment will be wasted if at a later stage the text is re-amended or the patent revoked after an appeal. The purpose of the present practice is to avoid this by providing for an interlocutory decision on the text to be maintained if the opponent raises objections. In that case the communication under Rule 58(5) EPC does not follow until the interlocutory decision has become final (cf. Guidelines for Examination in the EPO, Part D, VI - 6.2.2a and 6.2.3). If the opponent raises no objections, however, no interlocutory decision is needed and the patent proprietor assumes that the opponent is bound by his tacit agreement. He for his part is obliged to meet the formal requirements laid down in the communication under Rule 58(5) EPC. Moreover, the patent proprietor in particular has a legitimate interest in opposition proceedings being concluded within a reasonable time and the final maintenance of his patent not being unnecessarily delayed. Maintenance of a patent in the amended form is treated differently in disputed and undisputed cases in order to accelerate the process. The degree of involvement expected of the opponent in this respect is insignificant and not unreasonable. It is not possible to conceive of a need to protect any party's interests that could justify admitting an appeal which would render null and void the opponent's tacit agreement with the text envisaged for maintenance.

17. The Board of Appeal must therefore dismiss the appeal as inadmissible under Rule 65(1) EPC because it does not comply with Article 107 EPC.

18. The Board of Appeal sees no reason for meeting the appellants' request that the question of their appeal's admissibility be referred to the Enlarged Board of Appeal. While conceding that the decision may be of great importance to the opponents, the Board is entirely satisfied that it can be arrived at in the light of Article 107 and Rule 58(4) EPC. There appears to be no need to refer such matters to the Enlarged Board, particularly as the Board of Appeal's application of the Convention is not in conflict with decisions of other Boards or with a significant opinion expressed in legal commentaries (cf. J05/81, OJ EPO 1982, 155, 159).

ORDER

For these reasons, it is decided that:

1. The appeal is dismissed as inadmissible.

2. The request that the matter be referred to the Enlarged Board of Appeal is rejected.