T 0406/86 (Trichlorethylene) of 2.3.1988

Summary of Facts and Submissions

I. European patent No. 59 251 was granted on the basis of five claims on 26 September 1984 in response to European patent application No. 81 109 072.9 filed on 28 October 1981 with German priority of 4 March 1981. ...

II. The appellants originally filed opposition to the grant of the patent on 18 June 1985 on grounds of lack of novelty and inventive step and of insufficient clarity in the claims (Article 84 EPC). ...

III. In a decision dated 23 September 1986 the Opposition Division rejected the opposition. The substance of its reasoning was as follows. The claimed agent was not only new but also involved an inventive step. ...

IV. In a telex dated 13 November 1986 and confirmed in writing on 17 November 1986 the appellants (opponents) gave notice of appeal against this decision, paying the prescribed fee. ...

VI. In further written statements received on 24 June, 21 September and 16 November 1987 the appellants maintained that the text of the disputed claims did not rule out an epoxide content. In their responses received on 20 July and 8 October 1987, on the other hand, the respondents pointed out that the claims had to be interpreted in the light of the description, which clearly indicated the exclusion referred to. Finally, in another statement received on 30 December 1987 they proposed that the claims be amended in order to rectify the lack of clarity to which the appellants objected. ...

Reasons for the Decision

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

2. The following comments may be made on the claims as granted from the point of view of formal presentation of the subject- matter.

2.1 The appellants are right in saying that - per se - the term "ether containing no hydroxyl groups" includes and therefore appears to protect those ethers (containing no hydroxyl groups) which contain any other functional groups including the epoxy group.

2.2 On the other hand, from the definition of the problem on page 2, lines 24 to 25 of the contested patent, together with what is expressly stated on page 2, lines 40 to 41, it is clear that the claimed stabilising agent (Claims 1 and 2) and the trichloroethylene stabilised by means of it (Claims 3 to 5) must be epoxide-free or in other words that the ethers used - "containing no hydroxyl groups" - must not be epoxides. This discrepancy between the claims and the description contravenes Article 84 EPC and ought to have been removed during substantive examination.

2.3 A similar criticism applies to the pre-characterising portion of Claim 1. An agent "based on at least one amine, ... ethyl acetate, N-methylpyrrole and/or at least one alkylphenol" is linguistically and logically one that contains one or more of the four components amine, ethyl acetate, N-methylpyrrole and alkylphenol. Per se, therefore, Claims 1 to 4 - Claim 5 is not involved - cover stabilising agents or stabilised trichloroethylene which apart from the two constituents specified in the characterising portion of Claim 1 need contain no more than one of the four components referred to above. It is not until page 2, line 62, and page 3, lines 19 to 21, of the contested patent, together with all the examples, that it becomes clear what is actually meant: Of the four components referred to above, the first two (amine and ethyl acetate) are indispensable, whereas of the other two (N-methylpyrrole and alkylphenol) only one (N-methylpyrrole or alkylphenol) is required, although both are permitted together. This further obscurity contravenes Article 84 EPC and the Board would have to insist on its being eliminated if the case were still in the grant stage.

2.4 However, Article 84 EPC does not feature in the exhaustive list of grounds for opposition specified in Article 100 EPC and no amendment was made to the claims during opposition proceedings, which would have necessitated examination under Article 84 EPC. Accordingly, the Board is not at the present stage insisting that Claim 1 be amended in the interests of clarity but merely records that in view of the foregoing considerations the claims must be given a limited interpretation.

3. The respondents' "proposal" received on 30 December 1987 and construed by the Board as the main request (the auxiliary request formulated in the response to the appeal remaining unaltered) is that the claims be rewritten to remedy the lack of clarity referred to in sub-paragraphs 2.1 and 2.2 but not that in sub- paragraph 2.3. The question arises whether the proposed amendments should be incorporated at the present stage.

3.1 In opposition proceedings (including related appeal proceedings) the question whether to allow the patent proprietor's proposals for amendments to the description or claims is left to the Opposition Division and Board of Appeal, which must exercise due discretion in the matter. This derives from the relevant provisions of the EPC as follows:

3.1.1 Article 101(2) EPC lays down that examination of the opposition (i) shall be conducted in accordance with the provisions of the Implementing Regulations and that (ii) "the Opposition Division shall invite the parties, as often as necessary, to file observations ... on communications from another party or issued by itself."

3.1.2 Point (ii) relates primarily to observations and not to amendments to the documents.

3.1.3 As for point (i) Rule 57(1) EPC stipulates that the Opposition Division must invite the patent proprietor, when first informing him of the opposition, "to file his observations and to file amendments, where appropriate, to the description, claims and drawings" within a specified period. Even at this early stage, therefore, amendments should be requested from the patent proprietor only if this seems appropriate in the light of the grounds submitted for the opposition.

3.1.4 Rule 58(2) EPC concerns subsequent communications to the patent proprietor under Article 101(2) EPC. It lays down that, where appropriate, the patent proprietor must be invited "to file, where necessary, the description, claims and drawings in amended form". The double caveat in this sentence represented by the words "where appropriate" and "where necessary" emphasises the need for caution in inviting the patent proprietor to make amendments during opposition proceedings. In other words, he should be invited to do so only when it is "appropriate" and the amendments should be limited to what is "necessary" in the light of the grounds submitted for the opposition.

3.1.5 Although Rules 57 and 58 EPC directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments to be allowed only if it decides after exercising due discretion that it regards them as appropriate and/or necessary in the above sense. It would not be consistent with the general sense of these rules to interpret them as meaning that the Opposition Division could invite the patent proprietor to make amendments only if they were appropriate and necessary, but that he actually had the more far-reaching legal right to have inappropriate and unnecessary amendments incorporated.

3.1.6 Article 102 EPC sets out the options available when deciding on an opposition. If the grounds for opposition do not prejudice the maintenance of the patent as it stands, the Opposition Division rejects the opposition in accordance with Article 102(2) EPC and in that case it would clearly be inappropriate and unnecessary to admit amendments. If on the other hand there are grounds for the opposition which prejudice the maintenance of the European patent (Article 102(1) EPC), it is normally appropriate to give the patent proprietor an opportunity of making amendments to enable the patent to be maintained within the meaning of Article 102(3) EPC. However, the Opposition Division must maintain it only if the amendments are "appropriate" and "necessary" in the senses outlined above.

3.1.7 Limited consideration of amendments helps expedite and streamline opposition proceedings and it may be pertinent to recall in this connection that a European patent against which opposition has been filed is of its nature a set of national patents within the meaning of Article 64(1) EPC. Opposition proceedings before the European Patent Office constitute the only exception to the rule that a European patent once granted is subject to the national jurisdiction of the Contracting States.

3.1.8 An opposition taken to appeal is examined under Article 110(2) EPC, whose provisions are essentially the same as those of Article 101(2) (cf. points (i) and (ii) of 3.1.1). Further details are laid down in Rule 66(1) EPC, which states that - unless otherwise provided - "the provisions relating to proceedings before (the Opposition Division) ... shall be applicable to appeal proceedings mutatis mutandis".

3.1.9 In the Board's view this means that the law does not guarantee a patent proprietor the right to have proposed amendments incorporated when an opposition is taken to appeal; whether or not they are will depend rather on whether the Board judges them to be "appropriate" and "necessary" (see above). When taking a decision under Article 111(1) EPC the Board may, exercising due discretion, decide not to allow proposed amendments which it regards as inappropriate or unnecessary.

3.2 The Board commented on late submissions in Decision T 153/85 ("Alternative claims/Amoco", OJ EPO 1988, 1), in which the second and third paragraphs of point 2.1 read as follows (official text): "In relation to appeal proceedings, the normal rule is as follows: If an appellant wishes that the allowability of the alternative set of claims, which differ in subject-matter from those considered at first instance, should be considered (both in relation to Article 123 EPC and otherwise) by the Board of Appeal when deciding on the appeal, such alternative sets of claims should be filed with the grounds of appeal, or as soon as possible thereafter. When deciding on an appeal during oral proceedings, a Board may justifiably refuse to consider alternative claims which have been filed at a very late stage, for example during the oral proceedings, if such alternative claims are not clearly allowable." (The reasons for this are then stated.) The decision in question concerned a case in which the patent proprietors were the appellants, whereas in the present instance they are the respondents. Nonetheless, the principle is clear and may equally be applied to opposition proceedings.

3.3 In the present case the patent proprietors were informed of the grounds for appeal on 4 March 1987 and filed observations the same month. Further statements by the appellants were answered by the respondents in July and October 1987. Neither of the parties requested oral proceedings. When the respondents filed their proposed amendments on 30 December 1987, examination of the appeal under Article 110 EPC had been practically completed and a decision had already been drafted. Admitting the proposed amendments would thus slow down the proceedings and could also affect the rights of third parties, which would be contrary to the public interest.

3.4 In exceptional circumstances, for example if the amended text were obviously allowable, a different conclusion might be reached. This is not the case, however. Allowing amended claims would entail examining them in the light of Article 84 EPC, which in view of what has been said in point 2.3 would necessarily give rise to an objection and thus delay the proceedings further.

3.5 The Board is thus satisfied that, in view of the procedural and substantive considerations referred to above, the proposed amendment is neither appropriate nor necessary. Accordingly it is not allowed. ....

ORDER

For these reasons, it is decided that:

The appeal is dismissed.