T 0295/87 (Polyetherketones) of 6.12.1988

Summary of Facts and Submissions

I. The mention of the grant of patent No. 1879 ... was published on 24 March 1982 on the basis of 14 claims. Claim 1 reads as follows:

"A crystalline thermoplastic aromatic polyetherketone containing the repeating unit ..." The further independent claims concern the production of a polymer containing the repeat unit I (Claim 7) and an electrical insulation comprising a polymer containing the repeat unit I (Claim 14).

II. Opponent I filed an opposition against the grant of the patent on 9 December 1982 on the grounds of lack of novelty of the product claims and lack of inventive step of the process claims. It was also objected that the two earlier applications used for claiming of priority were not the first applications disclosing the alleged invention. On 16 December 1982 Opponent II gave notice of opposition to the granted patent and requested revocation thereof for non- compliance with the requirements of Articles 54 and 56 EPC. On 24 December 1982 Opponent III (the Appellant) also filed an opposition against the grant of the patent and requested revocation thereof on the grounds of lack of novelty and inventive step as well as insufficient disclosure of the invention to enable a skilled man to carry it out. ... These various objections which were emphasised in numerous later submissions as well as during oral proceedings were based essentially on the following documents: ...

III. By a decision dated 26 May 1987, the Opposition Division maintained the patent in amended form on the basis of a new set of 14 claims, of which Claim 1 reads as follows: "A tough crystalline thermoplastic aromatic polyetherketone consisting essentially of the repeating units I ..." Claims 3 and 4 read as follows: Claim 3: A polyetherketone according to either Claim 1 or Claim 2 which contains up to 30 mole % of the repeating units IV, V and/or VI. Claim 4: A polyetherketone according to Claim 1 which is the product obtainable by polycondensing hydroquinone, 4,4'- dihydroxybenzophenone and 4,4'-difluorobenzophenone. The reasons in this decision can be summarised as follows: ...

IV. The Appellant (Opponent III) thereafter filed a notice of appeal on 11 July 1987 and paid the prescribed fee at the same time. The arguments presented in the Statement of Grounds filed on 24 September 1987, in the later submissions and during oral proceedings held on 6 December 1988 were based on several additional documents, especially US-A- 4 105 635 (document (39)); these arguments can be summarised as follows: ...

V. The arguments presented by the Respondent (Patentee) in writing and during the oral proceedings held on 6 December 1988 can be summarised as follows: ...

VI. During oral proceedings the following set of claims was filed as the main request: Claim 1 as allowed by the first instance wit the restriction ...

VII. Although as parties to the appeal under Article 107 EPC Opponents I and II were duly summoned, they did not appear in the oral proceedings.

VIII. The Appellant requested that the decision under appeal be set aside and that the patent be revoked. The Respondent requested that the appeal be dismissed and that the patent be maintained on the basis of Claims 1 to 12 submitted during oral proceedings. At the end of the oral proceedings the decision was announced that the patent was maintained in accordance with the Respondent's request.

Reasons for the Decision

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

2. The proceedings before the Opposition Division were characterised by many lengthy submissions in writing from all the parties over a period of nearly four years between the filing of the notices of opposition in December 1982 and the oral hearing in September 1986, and provide an illustration of how opposition proceedings should preferably not be conducted under the provisions of Article 101 and Rules 57 and 58 EPC. It is to be noted that Article 101(2) EPC provides that "the Opposition Division shall invite the parties, as often as necessary, to file observations ... on communications from another party or issued by itself". Furthermore, Rule 57(1) and (2) EPC is concerned with the initial stage of opposition proceedings, immediately following the filing of the notice(s) of opposition, and clearly provides the patentee with an opportunity as of right to file observations in reply to such notice(s) of opposition. Thereafter, however, by way of contrast, Rule 57(3) EPC emphasises that following communication of the patentee's observations (and any amendments) to the other parties, such other parties shall only be invited by the Opposition Division to reply to such observations "if it considers it expedient". Although Article 101(2) and Rule 57 EPC only specifically refer to the criteria which the Opposition Division should use when considering whether to invite the filing of observations, in the Board's view it is clearly and necessarily implicit in these provisions that, in the absence of an express invitation from the Opposition Division, the parties may only file observations as a matter of discretion, when the Opposition Division considers them to be "necessary" or "expedient", in the sense discussed above. It would make a nonsense of these provisions to interpret them as providing that the Opposition Division should only invite observations from parties when it is considered "necessary" or "expedient", but that the parties can file observations as a matter of right even when they are unnecessary or inexpedient. (In this connection reference is made to Decision T 406/86 dated 2 March 1988, OJ EPO 1989, 302). It is clearly most desirable in the interest of the smooth and efficient conduct of opposition proceedings, and accordingly in the public interest, that observations by parties should be properly limited to what is necessary and expedient. This in turn requires the exercise of a proper control by the Opposition Division (and, mutatis mutandis, by a Board of Appeal) over the admissibility of observations by parties as well as of documents filed in support of such observations. Of course, the extent to which further observations from parties are necessary or expedient depends upon various factors, including the complexity of the issues raised, and can only be decided in the context of each individual case. Nevertheless, it should be recognised that, in appropriate cases, both the Opposition Division and the Boards of Appeal have the power, and indeed the duty, to refuse to admit observations and/or supporting documents for consideration in the opposition and, respectively, the appeal, in the exercise of discretion under Articles 101(2) and 114(2) and Rule 57(3) EPC. Attention is hereby drawn to the statement of "General Principles" applying to opposition procedure which is contained in the Information from the European Patent Office published in OJ EPO 1985, 272, which the Board endorses: "The EPO's aim is to establish as rapidly as possible, in the interests of both the public and the parties to the opposition proceedings, whether or not the patent may be maintained given the opponent's submissions. It seeks to achieve this by means of a speedy and streamlined procedure, which implies firm control by the Opposition Division at all stages. This requirement must however be balanced against the need to allow the parties to present their cases adequately so that the correct decision can be made." In the present case, at an early stage of the oral proceedings the Board made it clear that supporting documents which had not been filed in due time would only be considered as admissible provided the Board was satisfied that they were sufficiently relevant. However, in the Board's view, a stronger control could have been exercised by the Opposition Division in relation to the admissibility of the parties' extensive observations which were filed, by applying the principles of Article 101 and Rule 57 EPC as discussed above during the examination stage of the opposition.

3. Also at an early stage of the oral hearing the Board raised the question of the admissibility of Claims 3 and 4 as accepted by the Opposition Division and set out in paragraph III above, since their subject-matter was new in comparison with the claims as granted. The Board decided that such claims were not admissible for the reasons which follow, and accordingly the Respondent filed a set of claims as his main request during the oral hearing, which did not include the subject-matter of said Claims 3 and 4. Decision T 406/86, already mentioned above, contains a discussion concerning the admissibility of amendments to the text of a patent during opposition proceedings, and in particular makes clear that the filing of amendments during opposition proceedings is a matter of discretion under Rules 57(1) and 58(2) EPC. As is stated in that decision, such amendments are only admissible if they are "appropriate" and "necessary", having regard to the nature of the grounds of opposition and the issues raised thereby. In the Board's view, amendments to the text of a granted patent during opposition proceedings should only be considered as "appropriate" and "necessary" in the sense of Rules 57(1) and 58(2) EPC and therefore admissible, if they can fairly be said to arise out of the grounds of opposition laid down in Article 100 EPC. In the Board's judgment, the opposition procedure provided under Articles 100 to 102 EPC and the relevant Implementing Regulations, in particular Rules 57 and 58 EPC, is designed to provide an examination of the validity of a patent on the basis of the objections to validity raised under Article 100 EPC. Opposition proceedings are not an opportunity for the patentee to propose amendments to the text of a patent for purposes which are not clearly related to meeting a ground of opposition raised under Article 100 EPC. In particular, they do not provide an opportunity to include new subject-matter in the claims which may have adequate support in the original description, but has not previously been claimed as such. In the present case, Claim 4 was directed to the resulting polymer according to Example 14, and Claim 3 concerned a preferred embodiment, namely a specific molar ratio of units IV, V and/or VI in the copolymer. In the Board's judgment, the addition of such claims, which had no counterpart in the granted version of the claims of the patent-in-suit, cannot be regarded as an attempt to respond to an objection under Article 100 EPC. They represent, in effect, amendments which go beyond the objections to validity actually raised and are not, therefore, either necessary or appropriate within Rules 57 and 58 EPC. ...

ORDER

For these reasons, it is decided that:

1. The decision of the Opposition Division is set aside.

2. The case is remitted to the Opposition Division with an order to maintain the patent with description and claims as in the main request.