T 0586/88 (Final decision) of 22.11.1991

Summary of Facts and Submissions

I. European patent application No. 82 401 940.0, filed on 22 October 1982, led to the granting of European patent No. 0 078 208. Mention of the grant of this patent was published in the European Patent Bulletin on 29 August 1984.

II. On 23 May 1985 the appellants (opponents) filed a notice of opposition to the granted patent, requesting that it be revoked in its entirety.

III. The Opposition Division rejected the opposition by a decision issued without oral proceedings (Article 116 EPC). This decision was despatched by registered post on 12 October 1988 with a request for acknowledgement of receipt. The opposition file also contains a form (EPO Form 2339.1) dated 15 September 1988 which mentions a decision having been taken to reject the opposition and bears the signatures of the three members of the Opposition Division in question.

IV. On 6 October 1988, i.e. after the decision had been taken by the Opposition Division but before it had been despatched, the respondents (patent proprietors) requested (in a letter dated 4 October 1988 and received by the EPO on 6 October 1988) that the contested patent be maintained on the basis of an amended Claim 1, the text of which was enclosed with the letter.

V. On 21 November 1988, the appellants lodged an appeal against the Opposition Division's decision, at the same time producing a statement of grounds and paying the appeal fee.

The appellants requested that the contested decision be set aside and the patent revoked in its entirety. They also requested reimbursement of the appeal fee.

The appellants argued essentially as follows in support of their request for reimbursement:

On 19 October 1988 they had received a short communication from the EPO accompanied by the respondents' letter and the set of amended Claims 1 to 8 received by the EPO on 6 October 1988. Amended Claim 1 essentially summarised Claims 1 and 2 of the granted patent. Section 5 of the respondents' letter contained the further request that the contested patent be maintained on the basis of the amended claims. It was thus apparent that when the Opposition Division had sent out its decision, i.e. on 12 October 1988, it had ruled on claims with whose wording the respondents were no longer in agreement. This constituted a breach of Rule 58 EPC, since the Opposition Division should have decided to maintain the contested patent only on the basis of amended Claims 1 to 8, and then only after having communicated the amended claims to the appellants. Not having done this, it had committed a procedural violation which justified reimbursement of the appeal fee.

VI. The respondents request that the contested patent be maintained as granted or, in the alternative, on the basis of new Claims 1 to 4 filed on 26 June 1989.

Reasons for the Decision

1. The appeal is admissible.

2. Whether or not the Opposition Division's not having taken into account the request for amendment presented by the respondents on 6 October 1988 constitutes a substantial procedural violation within the meaning of Rule 67 EPC depends on when the internal decision-making process within the Opposition Division was completed, given that the final date for considering the aforementioned request for amendment necessarily preceded that point in time.

3. Since the EPC does not in any way oblige the EPO to pronounce decisions publicly, the Board feels that there is no way of clearly deducing at what point the internal decision-making process within an EPO department is completed following written proceedings.

Nor is Board of Appeal case law unanimous on this matter:

- In T 584/88 of 3 April 1989, the competent Board of Appeal used the moment when EPO Form 2048.1 had been signed by the three examiners and stamped with the date "8.6.88", attesting the agreement of all the examiners with the Examining Division's decision. It considered "8.6.88" as the point when the internal decision-making process within the Examining Division had been completed.

- In T 598/88 of 7 August 1989, the date when the written decision to be notified had been handed over to the EPO postal service, and when it had thus been removed from the power of the department that had issued it, was considered as the point when the internal decision-making process within that department had been completed in the absence of oral proceedings.

- In T 105/89 of 30 October 1990, it was again the point when the form (EPO Form 2339.1) was signed by the members of the Opposition Division and stamped with the date that was considered to mark the completion of the internal decision-making process within that department of the EPO.

4. However, it seems essential that this point in time should be clearly established if decision-making departments are to be prevented from wrongly disregarding requests for amendments, relevant new documents constituting prior art or requests for oral proceedings.

This is true in particular when the department involved is composed of several members, which is the case in particular in Examining or Opposition Divisions.

5. If the decision of an Examining or Opposition Division is pronounced not at the end of oral proceedings but following written proceedings or proceedings continued in writing after oral proceedings, there are three different moments in time which could in principle be considered as fixing the point when the internal decision-making process within that department of the EPO is completed:

(a) the point when the members of the decision-making department have all signed and dated the form (examination: Form 2048; opposition: Form 2339), thus completing the decision-making process,

(b) the handing over, by the examiner's clerk or formalities officer, of the reasoned decision (form containing the Order - with EPO seal - and a fair copy of the reasons) to the

EPO postal service, which removes the decision from the power of the decision-making department,

(c) the despatch of the reasoned decision, which removes the decision from the power of the EPO as a whole.

6. It is clear from these considerations that the point of law regarding the moment at which the internal decision-making process within an EPO department is completed following written proceedings or proceedings continued in writing after oral proceedings needs to be clarified in order to ensure uniform application of the law. The Board therefore feels it essential that the Enlarged Board of Appeal should examine this point of law and take a decision on the pending appeal.

ORDER

For these reasons it is decided that: Under Article 112(1)(a) EPC, the following point of law is referred to the Enlarged Board of Appeal:

"If the decision of an Examining or Opposition Division is pronounced not at the end of oral proceedings but following written proceedings or proceedings continued in writing after oral proceedings, at what point is the internal decision-making process within that department of the EPO completed?"