T 0328/87 (Admissibility) of 4.4.1991

Summary of Facts and Submissions

I. European patent No. 0 050 066 in respect of European patent application No. 81 401 494.0 was granted on 13 November 1985. Claim 1 reads as follows:

"Narrowly-built top-loading machine for washing linen, characterised in that:

- its total height H is 82 cm or less, thereby allowing the machine to be installed under a standard worktop (1) having a height of 85 cm and a thickness of 3 cm; - its total depth P is less than 60 cm, thereby ensuring that it does not protrude beyond the 60 cm depth of a standard worktop (1) and that it is aligned with the front surface of adjacent items of furniture;

- its control panel (6) is located on the top part of the machine without exceeding the dimensions of the worktop;

- the vat (20) containing the drum (21) is shaped in conformity with the latter, thereby providing spaces between the housing (3) and the vat (20) in the upper front and rear parts of the machine, the control units (25) associated with the control panel (6), as well as the product containers (9, 29), being sited in the said spaces."

II. On 11 August 1986, the appellant (opponent) filed notice of opposition to the patent by telex; a letter reproducing the contents of the telex was received on 14 August 1986, and the appropriate fee was paid on 8 August of the same year.

The grounds given for the opposition were that the subject-matter of the claims lacked inventive step.

Under the heading "Supporting evidence", the notice of opposition also contained the following statement: "Top-loading washing machines with a cylindrical vat and spaces for programming controls, etc. in the upper front and rear parts of the machine were manufactured and sold in France before the date of priority of the application. A machine of this kind is shown in industrial design No. 941 887, dated 5 January 1968. Detailed evidence and arguments, together with copies of this design, will be presented later."

III. On 20 October 1986, after the expiry of the opposition period, the appellant submitted industrial design No. 941 887, together with other supporting evidence as proof of prior use as alleged in the notice of opposition.

IV. In a communication dated 23 January 1987, the formalities officer told the appellant that the notice of opposition did not contain an indication of the facts, evidence and arguments presented in support of the grounds for opposition (Rule 55(c) EPC). The officer explained that this deficiency could no longer be remedied, because the time limit for opposition had expired.

In its reply of 19 March 1987, the appellant failed to present any observations on this point; instead, it submitted further evidence in support of its allegation of prior use.

V. By a decision dated 2 July 1987, the Opposition Division rejected the notice of opposition as inadmissible under Rule 56(1) EPC.

VI. On 27 August 1987, the appellant filed a notice of appeal against this decision and paid the appropriate fee. The statement of grounds for appeal was received on 2 November 1987.

VII. In a communication dated 8 November 1990, complying with Article 11(2) of the Rules of Procedure of the Boards of Appeal, the Board said that the opposition did not appear to meet the third of the three requirements set out in Rule 55(c) EPC, i.e. the obligation to provide, within the nine-month time limit, an indication of the facts, evidence and arguments in support of the grounds for opposition.

VIII. In its reply, dated 18 February 1991, the appellant withdrew its request for oral proceedings and asked for the decision regarding inadmissibility to be set aside and the case referred back to the Opposition Division for substantive examination.

In its statement of grounds for appeal and its reply of 18 February 1991, the appellant cited the following main points in support of its request:

- Rule 55(c) EPC only stipulates the content of the notice of opposition and makes no mention whatever of an opposition period of nine months. The formalities officer was therefore wrong in saying, in his communication of 23 January 1987, that there was a time limit of nine months for meeting the requirements of Rule 55(c) EPC.

- Under Rule 55(c) EPC the notice of opposition has to contain an indication of the facts, evidence and arguments presented in support of the grounds on which the opposition is based. This requirement is met by the mention, in the notice of opposition, of industrial design No. 941 887, dated 5 January 1968. Rule 55(c) EPC only says that the arguments and evidence have to be indicated; it does not require them to be placed on file.

- Claim 1 of the European patent encompasses four characteristic features, three of which relate to the dimensions of the washing- machine in question. Plainly, the dimensions of a washing-machine designed to fit into a standard kitchen cannot be regarded as inventive. Moreover, the fourth characteristic feature cited in the characterising portion of Claim 1 is contained in industrial design No. 941 887, dated 5 January 1968. The Board is therefore bound to doubt the validity of the claim.

- According to decision T 156/84 (OJ EPO 1988, 373), examination by the Office of its own motion pursuant to Article 114(1) EPC is not restricted to the facts, evidence and arguments provided by the parties and the relief sought. The EPO has a duty vis-à-vis the public not to grant or maintain patents which are not legally valid. Under Article 114(1) EPC, the Opposition Division and, by extension, the Board of Appeal are therefore obliged to examine the opposition of their own motion.

IX. By emphasising its complete agreement with the decision under appeal, the respondent (patent proprietor) tacitly requested that the appeal be dismissed and the decision of 2 July 1987 in respect of inadmissibility be confirmed.

Reasons for the Decision

1. Points V and VI in the summary of facts and submissions

indicate that the appeal complies with the requirements of Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Under Article 101(1) EPC, the opposition is examined "if it is admissible".

It is therefore imperative, before embarking on substantive examination, to verify the admissibility of the opposition.

Under Rule 55(c) EPC, the notice of opposition has to contain:

(1) a statement of the extent to which the European patent is opposed;

(2) an indication of the grounds on which the opposition is based;

(3) an indication of the facts, evidence and arguments presented in support of these grounds.

Under Article 99(1) EPC, notice of opposition may be filed "within nine months from the publication of the mention of the grant of the European patent". The requirements of Rule 55(c) EPC therefore have to be met before the time limit of nine months expires. This clearly follows from Rule 56(1) EPC, which provides for opposition to be rejected as inadmissible, especially where the notice of opposition fails to comply with the provisions of Rule 55(c) EPC and these deficiencies have not been remedied before the expiry of the opposition period.

The formalities officer was therefore correct in saying, in his communication of 23 January 1987, that the requirements of Rule 55(c) EPC had to be met before the expiry of the nine-month time limit.

3. The question now has to be examined whether, at the time when the nine-month opposition period expired, the notice of opposition met the three requirements of Rule 55(c) EPC as set out above.

3.1 Statement of the extent of opposition (requirement 1 of Rule 55(c) EPC)

The notice of opposition requested that the patent be "revoked in its entirety". Clearly, therefore, requirement 1 of Rule 55(c) EPC was met.

3.2 Indication of the grounds on which the opposition is based (requirement 2 of Rule 55(c) EPC)

The notice of opposition indicated, as the grounds on which the opposition was based, lack of inventive step, i.e. the obstacle to patentability specified in Article 100(a) EPC. Requirement 2 was therefore also met.

3.3 Indication of the facts, evidence and arguments presented in support of the grounds for opposition (requirement 3 of Rule 55(c) EPC)

Whereas the requirements of Rule 55(a) and (b) EPC and requirements 1 and 2 of Rule 55(c) EPC can be considered as formal in nature, requirement 3 of Rule 55(c) EPC in conjunction with Article 99(1) EPC is substantive in nature, and calls for reasoning which goes to the merits of the opponent's case. The question whether a notice of opposition meets the minimum substantive requirements of Article 99(1) and Rule 55(c) EPC can therefore only be decided in the context of that particular case, from the point of view of a person skilled in the art to which the opposed patent relates (see decision T 222/85, OJ EPO 1988, 128, point 4 of the Reasons for the Decision).

Under the Guidelines for Examination (Part D, Chapter IV, 1.2.2.1 (f)), where there are allegations that prior use is comprised in the state of the art, requirement 3 of Rule 55(c) EPC is satisfied if the Opposition Division (and the patent proprietor) are able to determine the following details:

(a) the date on which the alleged use occurred, i.e. whether there was any instance of use before the date on which the application for the relevant European patent was filed,

(b) what has been used, in order to determine whether the object in prior use is identical with or similar to the subject-matter of the contested patent,

(c) all the circumstances relating to the use, by which it was made available to the public, as for example the place of use and the form of use.

3.3.1 Determining the date of prior use (criterion (a))

The notice of opposition merely indicates that prior use occurred "before the date of priority of the European patent application". In other words, the prior use had occurred over an indeterminate period known only to be "before" the date of priority. This amounts in effect to an allegation of prior use without indicating the relevant date or period.

The industrial design referred to in the notice of opposition is dated 5 January 1968. A date of this kind is normally the date on which the design was completed, not the date of manufacture of the product in which the design was embodied. The notice of opposition contains no indication whether the prior use occurred before, on, or after that date. The appellant has presented no further evidence to prove that the alleged prior use occurred before the date of priority of the contested European patent.

Criterion (a) above is therefore not fulfilled.

3.3.2 Determining what has been used (criterion (b))

This requirement has been met. The notice of opposition includes an indication of the object in prior use, namely "a top-loading washing-machine with a cylindrical vat and spaces for programming controls, etc ... in the upper front and rear parts of the machine"; and an indication of the arguments (or evidence) presented in support of the grounds for opposition is constituted by the mention in the notice of opposition of the number and date of the industrial design.

The industrial design in question was presented after the expiry of the opposition period. However, as the appellant pointed out, Rule 55(c) EPC only requires that the industrial design be indicated. It does not have to be presented: this can be done later in the course of the proceedings.

Regarding this, reference is made to decision T 234/86 (OJ EPO 1989, 79), according to which the requirements of Rule 55(c) EPC are fulfilled if the evidence concerned (in this case, a document) is clearly specified in the notice of opposition and if it is clearly stated which alleged facts the evidence is intended to prove.

3.3.3 Determining the circumstances relating to the use (criterion (c))

The third criterion has not been fulfilled. Even if the facts, namely the manufacture and marketing in France of the top-loading washing-machine, are deemed to be sufficiently specified in the notice of opposition, the problem remains that these facts are not supported by any indication of evidence, such as sales catalogues, delivery notes, names and addresses of witnesses, etc.

The failure to mention any such evidence removes the entire basis of the appellant's allegation that a washing-machine of this kind was manufactured and marketed.

3.4 In view of the above, the Board concludes that, at the point when the nine-month time-limit expired, the notice of opposition did not fulfil criteria (a) and (c) and consequently failed to comply with requirement 3 of Rule 55(c) EPC. The opposition was therefore inadmissible.

4. The appellant argued that the subject-matter of Claim 1 manifestly lacked inventive step and that, with regard to the above-mentioned decision T 156/84, the EPO has a duty vis-à-vis the public not to grant or maintain patents which are not legally valid. In the present case, the Opposition Division would therefore have been obliged, under the terms of Article 114(1) EPC, to examine the opposition of its own motion.

Regarding this procedure, the Board emphasises that the power conferred on the Office by Article 114(1) EPC to examine the facts of its own motion could only be exercised within the general scope of the provisions of the EPC. With a view to determining whether, in the present case, the Opposition Division was in a position to exercise this power, it is necessary to consider the following line of argument:

- Article 101(1) EPC states that the grounds for opposition are to be examined "if the opposition is admissible". Conversely, it would appear that if the opposition is found by due means to be inadmissible, its substance cannot be examined. This is confirmed by Rule 56 EPC, referred to above, which obliges the Opposition Division to reject the opposition as inadmissible if, in fine, the opposition does not comply with the provisions of the EPC regarding the admissibility of opposition. As soon as rejection occurs, the opposition procedure is legally terminated, and substantive examination of the opposition cannot be initiated.

- According to Article 114(1) EPC, "the European Patent Office shall examine the facts of its own motion ... in proceedings before it". The legal mechanism for initiating examination by the Office of its own motion is therefore akin to the mechanism for initiating substantive examination. This means that when an opposition has been rejected in accordance with the provisions of Rule 56 EPC, there are no proceedings "before" the EPO, and it is no longer possible for the Office to examine the facts of its own motion.

Needless to say, this line of argument applies in full, mutatis mutandis, to the conditions under which the Boards of Appeal may exercise the same power of examination by the Office of its own motion, in accordance with the provisions of Rule 66(1) EPC.

In fact, the inadmissibility of an opposition or an appeal has the effect of transferring the European patent to the national jurisdiction of the designated States, which then assume sole responsibility for assessing the patent's validity with reference to their own legislation.

5. In view of the above, the Board concludes that the notice of opposition is irredeemably deficient, and that the decision of the Opposition Division in rejecting the opposition as inadmissible under Rule 56(1) EPC must therefore be confirmed.

ORDER

For these reasons it is decided that: The appeal is dismissed.