T 0234/86 (Therapy with interference currents) of 23.11.1987

Summary of Facts and Submissions

I. The appellants are proprietors of European patent No. 0 002 811 (application No. 78 101 805.6) comprising eight claims and granted on 24 February 1982. The application was filed on 21 December 1978 claiming the priority of 27 December 1977 (priority document AT 9305/77).

II. The respondents (opponents) filed opposition on 15 November 1982.

III. In the course of the opposition proceedings the appellants asked that the opposition be rejected as inadmissible on the grounds that a document cited by the opponents (DE-A-2 632 700) (D3) had been published after the priority date of the contested patent. This document could be cited only against the subordinate claims, not against Claim 1. Since the opposition was against the patent in its entirety and this document was an indispensable element in the respondents' argument, the opposition was based on unallowable evidence and for this reason alone should be rejected as inadmissible. Moreover, the respondents had cited another document (DE-A- 2 615 157) (D4), which was by no means short, without any indication of the relevant passages. The information provided by the respondents in connection with this document was not sufficient for the appellants to be able satisfactorily to consider the respondents' argument in so far as it referred to the citation. This was another reason for rejecting the opposition as inadmissible.

IV. Following oral proceedings and some correspondence the appellants, on 12 June 1985, finally filed a main request and seven auxiliary requests.

V. In a communication under Rule 58(4) EPC dated 17 July 1985 the Opposition Division informed the parties that it intended to maintain the European patent in the wording contained in the appellants' auxiliary request 2.7, stating further:

- "The patent can be maintained as amended only if the patent proprietors make their auxiliary request 2.7 filed on 12 June 1985 the main request, since the Opposition Division in arriving at such a decision is bound by the text submitted or agreed by the patent proprietor, which must always be the main request (Article 113(2) EPC).

- To expedite the proceedings the Opposition Division is basing a Rule 58(4) communication on auxiliary request 2.7. If within the period laid down in Rule 58(4) EPC the patent proprietors raise no objection to the text in which the patent is to be maintained, it will be assumed that they have made auxiliary request 2.7 of 12 June 1985 into their main request. If the patent proprietors do object, the Opposition Division will deliver a decision on the main request, which will then be valid under Article 102 EPC." The above communication also referred the parties to Legal Advice from the EPO No. 15/84 (OJ EPO 1984, 491).

VI. In their reply the appellants declined to make auxiliary request 2.7 the main request, arguing essentially as follows: Agreement of all the versions of the claims proposed in the main and auxiliary requests was implicit in the fact of their submission, even if this applied to the auxiliary requests only in the event of preceding requests being rejected, for example as the result of a decision. Claims did not have to be expressly agreed. The two terms "submitted" and "agreed" in Article 113(2) were linked not by the word "and" but by the conjunction "or", which expressed an alternative. Article 113(2) EPC could not be read as meaning that the text submitted or agreed always had to be the subject of a main or a single request. Article 113 applied equally to the departments of first and second instance; and, as a number of appeal decisions showed, it was considered beyond dispute that different versions - all to be regarded as "submitted" in the meaning of Article 113(2) - could be put forward as main and auxiliary requests in appeal proceedings, with the Board of Appeal then taking them in order but delivering one decision only (T 169/83, OJ EPO 1985, 193 and in particular pp. 195 and 198, point 1). There were, therefore, several texts that had been submitted and agreed and in respect of which the patent proprietors merely reserved the right, should one of the auxiliary requests be allowed but not the main request, to pursue any preceding requests in appeal proceedings. Moreover it was not merely in the patent proprietors' legal interest that a reasoned, appealable decision should be delivered concerning the various requests. They were positively entitled to such a decision. If one takes the view that an applicant or patent proprietor who wishes to have a claim of the broadest possible scope considered in appeal proceedings may only submit this one claim and must first allow it to be rejected by the department of first instance, it would mean that any auxiliary requests, among which as in the present case one is generally found to be allowable, would not have the benefit of scrutiny at two levels of jurisdiction because they would be put only before the appeal body.

VII. In a decision dated 20 May 1986 the Opposition Division ruled the opposition admissible because it complied with all the requirements of Article 99 and Rule 55 EPC and because none of the arguments adduced by the patent proprietors could be considered sound.

It reasoned as follows: - No EPC provision required that, for an opposition to be admissible, the argument in support of opposition must be conclusive in itself.

- The citation which had been published during the priority period was published prior art for those parts of the application not covered by the priority document.

- The citation - referred to in its entirety - was short, so that a skilled person could rapidly extract the technical information relevant to the patent in question.

VIII. The Opposition Division revoked the patent on the grounds - set out in detail - that the subject-matter of the claims forming the object of the main request did not involve an inventive step in view of US-A-3 895 639 (D1) and IEEE Transactions on Bio-Medical Engineering, Vol. BME-18, No. 3, May 1971 (New York), and G. Silverman et al. "A programmable parallel timing system", pp. 201-205 (D2).

IX. Points IV and V of the Reasons for the Decision further stated that it was the Office's regular practice to revoke a patent solely on the ground of the main request's non- allowability, since only the main request represented the text unconditionally submitted or agreed by the patent proprietors for the purposes of Article 113(2) EPC. Attention was drawn to a previous communication from the Opposition Division concerning auxiliary requests 2.2 to 2.6.

X. The appellants appealed against the Opposition Division's decision on 18 July 1986, at the same time paying the prescribed fee, and filed a statement of grounds on 17 September 1986. In this they requested that the patent be maintained on the basis of Claims 1 to 8 in the specification or, alternatively, on the basis of one of the six sets of claims received on 14 June 1985. They also asked that the appeal fee be reimbursed.

XI. ...

XII. In a letter received on 11 August 1986 the respondents withdrew their opposition without commenting on the appellants' grounds for appeal.

XIII. The present Claim 1 in the main request reads as follows: ... ...

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Admissibility of the opposition

2.1 The appellants did not deny that the opposition complied with Article 99 and Rule 55(a), (b) and (d). They merely denied that the opposition met in full the requirements of Rule 55(c), arguing that the facts and evidence adduced in its support were not conclusive in that evidence was brought in support of alleged facts that was either inappropriate (DE-A-2 632 700) or not immediately recognisable as appropriate (DE-A-2 615 157) for the purpose.

2.2 The Board of Appeal shares the view of the Opposition Division that none of the opponents' arguments can be regarded as sound since the EPC nowhere requires that an argument brought in support of opposition must be conclusive in itself for the opposition to be admissible.

2.3 To prove their claim that the subject-matter of Claim 1 in the patent as granted was not allowable because of a lack of inventive step, the opponents referred to general knowledge of the art and referred to three further documents (pages 3 and 4 of the notice of opposition), each clearly identified. They also indicated what they considered was known from which document. Given the shortness of DE-A-2 615 157 (6 1/2 typewritten pages) there was no need to indicate where precisely the claimed disclosure was made. The relevant requirement of Rule 55(c) EPC is therefore met.

2.4 Considering the evidence - which in this case involved determining whether the documents adduced actually established the facts as maintained - is part of the process of ascertaining whether the opposition is well founded in substance. This, under Article 101(1) EPC, may only be done if it has already been determined that the opposition is admissible. In the present case, therefore, the admissibility of the opposition had to be established before it could be decided whether and to what extent the priority of the initial Austrian application had been rightly claimed, whether the citations had been published before the priority date and whether they disclosed what the opponents maintained they did.

3. Main request ...

3.3 Novelty ...

3.3.8 The subject-matter of Claim 1 is therefore novel (Article 54 EPC).

3.4 Inventive step ...

3.4.5 The subject-matter of Claim 1 therefore involves inventive step within the meaning of Article 56 EPC. Claims 2 to 8 are dependent on Claim 1, so that their subject- matter, too, involves inventive step. The Board of Appeal accordingly believes that none of the grounds for opposition referred to in Article 100(a) EPC stands in the way of the contested patent being maintained on the basis of Claims 1 to 8.

4. Auxiliary requests ...

5. Reimbursement of appeal fee

5.1 In their grounds for appeal the appellants requested that the appeal fee be reimbursed, arguing that the Opposition Division's refusal to deliver a decision on their auxiliary requests constituted a substantial procedural violation within the meaning of Rule 67 EPC.

5.2 In its reasoning (point IV) the Opposition Division defended its refusal on the grounds that it could decide to maintain the patent as amended only in a form agreed unconditionally by the patent proprietor. Since the various wordings contained in the auxiliary requests had not been agreed unconditionally by the patent proprietors it could take a decision only on their main request.

5.3 The Opposition Division bases its argument on Legal Advice from the EPO No. 15/84 (OJ EPO 1984, 491).

5.4 Under Article 102(3)(a) EPC the Opposition Division can maintain a European patent as amended only if the proprietor of the patent approves the text in which the Opposition Division intends to maintain the patent by the procedure laid down in Rule 58(4). The Legal Advice referred to states that it may be advisable in opposition proceedings to submit an alternative set of claims on which the Opposition Division can base its decision to maintain the patent in amended form. The patent proprietor may also safeguard his rights by pursuing a set of claims which was not accepted by the Opposition Division. If he raised objections within the period of one month provided for in Rule 58(4) EPC, the Opposition Division may revoke the European patent. In this way the applicant may bring proceedings before the Boards of Appeal without forfeiting the right to obtain, in the alternative, a European patent based on the narrower version proposed by the Opposition Division. It should be noted that, should the patent proprietor wish to reject the Opposition Division's proposal, this must be done expressly. Under Rule 58(4) and (5) EPC, silence is taken to mean consent (Legal Advice No. 15/84, point 4).

5.5 The Board of Appeal considers this legal advice to be at best misleading. It conveys the impression that, if a patent proprietor maintains requests - such as the main request or higher-ranking auxiliary requests - aiming to ensure that the patent is maintained in a form other than that in which the Opposition Division intends to maintain it, the patent can be revoked even if another auxiliary request is for a version which in the Opposition Division's view meets the requirements of the EPC.

5.5.1 Article 102(3)(a) in conjunction with Rule 58(4), and Article 113(2) EPC cannot, however, be interpreted in this way. The patent proprietor is unquestionably entitled to file both a main and auxiliary requests with the Opposition Division. Legal Advice No. 15/84 concedes this and, indeed, recommends it. Moreover the Boards of Appeal have always allowed the filing of auxiliary requests, at least when done in due time (see, for example, Decision T 169/83 already referred to). This was, after all, what the authors of the Convention intended (see Historical Documentation relating to the EPC M/PR/I, p. 54, point 509). As the appellants rightly emphasise, requiring that the text on which a decision is to be taken be submitted or agreed unconditionally by the patent proprietor would mean adding an extra provision to Article 113(2) EPC.

5.5.2 The fact that Article 102(3)(a) EPC provides that a decision to maintain a patent can be taken only if the Opposition Division is satisfied that the patent proprietor approves of the text in which the patent is to be maintained does not mean that this approval has to be unconditional. Article 102(3) EPC reads: "If the Opposition Division is of the opinion 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 this Convention, it shall decide to maintain the patent as amended, provided that: (a) it is established, in accordance with the provisions of the Implementing Regulations, that the proprietor of the patent approves the text in which the Opposition Division intends to maintain the patent; ..." Rule 58(4), which is related to Article 102, lays down that before the Opposition Division decides on the maintenance of the European patent in the amended form, it must inform the parties that it intends to maintain the patent as amended and must invite them 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.

5.5.3 Article 102(3)(a) and Rule 58(4) EPC take account of the general provision contained in Article 113(2) EPC which states that the European Patent Office must consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant for or proprietor of the patent. Even if Articles 103(3) and 113(2) and Rule 58(4) EPC refer only to a single text, this does not necessarily mean that only one text may be submitted for a decision or in other words that submission of or agreement to a text has to be unconditional. On the contrary, the patent proprietor may also - as in the present case - give only conditional agreement through an auxiliary request. With regard to appeal proceedings this is made clear in the Historical Documentation relating to the EPC (cf. M/PR/I, loc. cit.). In such cases, therefore, the Boards of Appeal have interpreted Articles 102 and 113 and Rule 58(4) and (5) EPC to mean that a patent may also be maintained in an amended form if the proprietor has requested maintenance in that form only as an alternative (cf., for example, Decision T 205/83 "Vinyl ester/crotonic acid copolymers/HOECHST", OJ EPO 1985, 363).

5.5.4 There is no reason to interpret the relevant provisions of the EPC differently for Opposition Divisions on the one hand and Boards of Appeal on the other.

5.5.5 This approach also makes for an efficient procedure since it enables both patent proprietor and opponent to decide whether or not an appeal is appropriate while if a case is brought to appeal and the patent proprietor pursues only requests rejected by the department of first instance, the matter does not need to be referred back in order to avoid missing the first level of jurisdiction.

5.6 It is, therefore, the opinion of the Board of Appeal that, without infringing Articles 102 and 103 and Rule 58 EPC, the Opposition Division, too, may decide to maintain the patent on the basis of an auxiliary request by the patent proprietor and indeed must do so if the latter pursues a main request plus non- allowable auxiliary requests which precede one which is allowable.

5.7 Before a decision is taken to maintain a patent in limited form, the proprietor is required to file translations of the amended claims, pay the printing fee, etc. All this will be in vain if subsequently the text is changed again in the light of an appeal or the patent is revoked. Under present practice, the issue of a reasoned interlocutory decision open to appeal is intended to prevent this if the opponent has raised objections (cf. Guidelines for Examination in the EPO, Part D-VI, 6.2.2 and 6.2.3, and Information from the EPO: "Opposition procedure in the EPO", OJ EPO 1985, 272). This course can be adopted perfectly well even if the patent proprietor has given conditional approval to the text.

5.8 Such a decision to maintain a patent on the basis of an auxiliary request is taken - at least in written proceedings - after the time limit laid down in Rule 58(4) has expired. An appeal is then allowed under Article 106(3) EPC and must under Rule 68(2) be reasoned just like any decision open to appeal. The patent proprietor is adversely affected by the rejection of a request or requests preceding an auxiliary request which is allowed. The opponent is also adversely affected by the decision if he has stated his disapproval within the time limit under Rule 58(4) (cf. T 244/85, OJ EPO 1988, 216). The decision must therefore give reasons for every rejection of a request by the patent proprietor and for allowing an auxiliary request which the opponent has contested in good time.

5.9 In the present case the EPC was wrongly interpreted and the patent instead of being maintained in the form considered maintainable by the Opposition Division, was revoked. This does not constitute a substantial procedural violation, however, because the EPC does not clearly lay down the procedure to be followed in dealing with main and auxiliary requests (cf. T 156/84, point 3.13, OJ EPO 1988, 372).

5.10 Rule 68(2) EPC lays down that decisions of the EPO must be reasoned. If, as in the present case, a single decision rejects several requests, it must give reasons for the rejection of each one. This obligation was not adequately fulfilled. Although in exceptional circumstances it may be permissible to refer in a decision to reasons given in preceding communications, it must be quite clear which considerations led the Opposition Division to its conclusion. This is not the case here, at least with regard to the rejection of auxiliary requests 2.3 and 2.5. The decision itself, moreover, refers to a communication attached to the Rule 58(4) notification dated 17 July 1985, which in turn refers to a communication dated 13 February 1985. The latter does indeed state the legal reason for rejecting these auxiliary requests, namely lack of inventive step. However, the only explanation given for citing this ground for opposition is a reference to a discussion within the Opposition Division. During this the Opposition Division had apparently agreed with the opponents' objections to a version of Claim 1 which, as a result of the deletion of the words "input of", had become more generally framed than the version the Opposition Division had itself proposed, and held that the patent should be revoked. That may just be acceptable as a reason if the other party's submission requires no explanation and the facts are very simple, so that it is perfectly obvious why the Opposition Division agrees with the argument put forward. But even this is doubtful in the present case. And as far as the auxiliary requests 2.3 and 2.5 on which the decision to revoke the patent was based are concerned, all that emerges from point 3 of the communication is that having regard to the opponents' interpretation of "IEEE Transactions" the form of Claim 1 proposed by the Opposition Division (on which these auxiliary requests are based) probably lacks inventive step. This supposition is not a sufficient argument, particularly as the opponents' pleadings in its support relate not to the versions of Claim 1 proposed in auxiliary requests 2.3 and 2.5 but to the broader version on which auxiliary requests 2.2 and 2.4 are now based. Although the communication thus clearly shows that the Opposition Division considered that the subject-matter of Claim 1 in auxiliary requests 2.3 and 2.5 lacked inventive step, it does not - as therefore does not the contested decision - indicate whether and if so why it believed the opponents' views concerning an apparatus in which the output of a frequency divider is "fed back" in an undefined manner to another frequency divider apply in the same way to an apparatus in which the output of a frequency divider is "fed back" in a manner specifically described to the input of another frequency divider. No reasons, therefore, are given as required by Rule 51(3) in the case of EPO communications and by Rule 68(2) for decisions for rejecting auxiliary requests 2.3 and 2.5. The Board regards this as a substantial procedural violation justifying reimbursement of the appeal fee (Rule 67 EPC).

ORDER

For these reasons, it is decided that:

1. The contested decision is set aside.

2. The matter is remitted to the department of first instance with the order that the patent be maintained in the following amended form.

2.1 Claims: 1 to 8 in the specification.

2.2 Description: pages 1 and 2 of the annex to the Rule 58(4) communication of 4 April 1984, column 1, line 56 to column 2, line 3 of the specification, page 3, line 21 to page 15 of the annex to the communication of 4 April 1984.

2.3 Drawings: Figures 1 to 6 in the specification.

3. The appeal fee is to be reimbursed.