T 0271/85 (Admissibility of appeal by opponent) of 9.3.1988

Summary of Facts and Submissions

I. The appellants entered opposition to European patent No. 6 613, requesting that the patent be revoked on the grounds of non-patentability.

II. A first communication pursuant to Rule 58(4) EPC was issued to the parties by letter dated 21 February 1984. The appellants stated within the prescribed period of one month that they disapproved of the text in which it was intended to maintain the patent. The Opposition Division then continued examination of the opposition in accordance with Rule 58(5) EPC.

III. In a communication dated 9 July 1984 taking account of the Opponents' reply, the Opposition Division suggested a wording of the claim which it considered possible. The opponents (appellants) replied by letter dated 30 July 1984 that they did not wish to make any observations regarding that communication. The patent proprietors agreed with the Opposition Division's suggestion.

IV. On 15 October 1984 the Opposition Division issued a second communication pursuant to Rule 58(4) EPC informing the parties that it wished to maintain the European patent in the form proposed and inviting them to state their observations within a period of one month if they disapproved of the text. Point 3 of the Notes to this communication is worded as follows: "3. If, within the period stipulated, none of the parties expresses objections to the text in which it is intended to maintain the patent, the request pursuant to Rule 58(5) EPC will be issued. If that request is complied with, the Opposition Division will decide to maintain the patent as amended (Article 102(3) EPC). 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)."

V. In a communication pursuant to Rule 58(5) EPC dated 17 April 1985 the EPO informed the patent proprietor that no party had responded to the communication pursuant to Rule 58(4) of 15 October 1984 by raising objections to the text in which it was intended to maintain the patent and requested him within a period of three months after notification of the communication to pay the printing fee and to file translations of the amended claims.

VI. In a letter dated 16 April 1985, received on 19 April 1985, the opponents (appellants) asked the Office for "immediate notification of the Opposition Division's pending decision on the matter to enable the time limit provided for in Article 108 in conjunction with Article 106(1) EPC to be observed."

VII. The patent proprietor filed the translations of the amended claims by letter dated 16 July 1985 and paid the fee for printing.

VIII. On 17 October 1985 the Head of Formalities issued a decision pursuant to Article 102(3) EPC on maintenance of the European patent as amended. A note to this effect was published on 4 December 1985 in European Patent Bulletin 1985/49.

IX. On 2 November 1985 the opponents served notice of appeal against the decision of 17 October 1985, enclosing a statement of grounds and at the same time paying the prescribed fee. In their appeal they requested that the patent be revoked in its entirety. The patent proprietors (respondents) consider the appeal to be inadmissible (cf. letters dated 14 April 1986 and 12 June 1986), whereas the opponents (appellants) stand by their appeal (cf. letters dated 23 March and 18 September 1987).

Reasons for the Decision

1. Under Article 107 EPC, the admissibility of the present appeal is dependent upon whether the appellants are adversely affected by the contested decision.

2. In the course of the opposition proceedings the opponents (appellants) were sent the Rule 58(4) communication and invited to state their observations within a period of one month if they disapproved of the text in which it was intended to maintain the European patent. They did not comment within the one-month period, which ended on 26 November 1984. Only in their letter dated 16 April 1985 did they request the issue of a decision open to appeal.

3. The question of the admissibility of an appeal lodged by an opponent who has not notified his disapproval of the maintenance of the patent in the amended form within a period of one month as required by Rule 58(4) EPC has already been dealt with in a decision of Board of Appeal 3.3.2 dated 23 January 1987 (T 244/85 "Aluminium trihydroxide/VAW" published in OJ EPO 1988, 216).. In that case the opponents' appeal was dismissed as inadmissibles because they could not claim to have been adversely affected.

4. In their interlocutory decision dated 11 March 1987 the Board of Appeal referred to the decision of 23 January 1987 and stated that the appeal should not be admissible.

5. The Board is of the opinion that the question of the admissibility or non-admissibility of an appeal by an opponent who does not give his views within the one-month period laid down in Rule 58(4) EPC involves a point of law of fundamental importance because it is relevant in a substantial number of similar cases and is therefore of great interest not only to the parties in the present appeal but to the public at large. Settling this point of law is moreover important not only to the users of the European patent system but to the EPO itself, that is to say to all the Boards of Appeal and to the department of first instance in opposition proceedings. Furthermore, after the decision of 23 January 1987 had been issued Rule 51(4) EPC was amended with effect from 1 October 1987. This amendment could also have a bearing on the construction of (unamended) Rule 58(4) EPC.

6. The Board therefore considers it necessary for the Enlarged Board of Appeal to decide on this point of law pursuant to Article 112(1) EPC.

ORDER

The following point of law is submitted to the Enlarged Board of Appeal for decision: "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?"