T 0002/89 (Grounds for opposition) of 3.7.1989

Summary of Facts and Submissions

I. European patent No. 59 895 was granted on 17 April 1985 in response to European patent application No. 82 101 469.3 filed on 26 February 1982 claiming the priority of an earlier German application of 4 March 1981. It relates to binders for cationic paint for electrophoretic coating, manufactured by reacting four specific components.

II. The appellants (opponents) filed a notice of opposition to this European patent in a letter dated 15 January 1986 citing two documents: an article in the journal "Kollidnyi Zhurnal", Volume 35, pages 1100-1103, and European patent No. 4 090. They further stated that they had also filed opposition to the German patent whose priority was claimed by the European patent. To simplify matters they were therefore forwarding their five-page notice of opposition to the German patent by way of further grounds. Its content was to serve as the substance of their opposition to the European patent.

III. The German and the European patents differ in that the use of component C is optional in the former ("if appropriate") but obligatory in the latter.

IV. In a letter dated 3 June 1986 the respondents (patent proprietor) requested that the opposition be rejected and the patent maintained as granted. They examined in detail the substance both of the documents cited by the opponents and of their notice of opposition, pointing out inter alia that, in the current version of Claim 1 of the granted patent, component C amounting to 10 to 50% by weight was an obligatory component of the binder according to the invention.

V. The opponents commented in detail on the substance of the patent proprietor's case in a letter dated 31 October 1986, the patent proprietors replied by letter on 19 December 1986, and on 24 March 1987 the Opposition Division issued a communication under Article 101(2) and Rule 58(1) to (3) EPC. That communication argued, giving detailed reasons, that neither the subject-matter of Claims 1 to 3, 9 and 11 nor the relevant manufacturing processes were new vis-à-vis the citations and therefore were not patentable under Article 54 EPC. As the case stood, the patent should accordingly be revoked. The patent proprietor was asked to file observations within four months.

VI. In response to the Opposition Division's communication the patent proprietor filed substantive observations dated 7 July 1987 together with a nine-page test report by way of corroboration.

VII. The Opposition Division stated in a further communication dated 27 November 1987 that the comparative tests submitted seemed significant and that the patent might therefore be maintainable. The parties were asked to attend oral proceedings on 20 April 1988, in preparation for which both parties submitted detailed observations.

VIII. At the oral proceedings and in a further communication dated 9 May 1988 it was pointed out that the opposition was likely to be rejected as unsubstantiated and therefore inadmissible. The European patent referred to component C as obligatory, while the corresponding German patent described it as optional. Consequently the notice of opposition to the German patent, which had been filed in support of the opposition to the European patent, did not address the matter at issue.

IX. In the contested decision of 19 October 1988 the Opposition Division rejected the opposition as inadmissible under Rule 56 EPC. Given the differing importance attached to component C in the German and European patents the grounds for the opposition were unsound, the facts adduced being unrelated to the subject-matter of the European patent. Since there was no causal connection between the opposition and the claim as currently worded, the soundness of the opponents' reasoning could not be directly understood. The opposition should therefore be rejected as inadmissible in the light of decision T 222/85 (OJ EPO 1988, 128). The fact that this decision was taken only at a late stage in the procedure did not constitute a bar, since Rule 56(1) EPC did not lay down any time for deciding on an opposition's admissibility.

X. In their appeal against the Opposition Division's decision the opponents argue that their opposition of 15 January 1986 fulfilled all the requirements of Rule 55(c) EPC and was therefore admissible. In accordance with that provision they had cited two documents, explaining why these conflicted with the contested patent. That submission had been properly understood by both the patent proprietor and the Opposition Division, since both had examined the substance of the grounds for the opposition without further investigation and had had no cause for doubt.

XI. The appellants ask that the contested decision be set aside and the proceedings referred back to the Opposition Division. The respondents ask that the appeal be dismissed or, in the alternative, referred back to the Opposition Division.

Reasons for the Decision

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

2. Under Rule 56(1) EPC the Opposition Division rejects an opposition as inadmissible if it finds that it does not comply with Rule 55(c) EPC. According to Rule 55(c) the notice of opposition must contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based as well as an indication of the facts, evidence and arguments presented in support of these grounds. In the Opposition Division's view the notice of opposition of 15 January 1986 does not fulfil the latter requirement.

3. In decision T 222/85 (OJ EPO 1988, 128) the Board stated that the requirement concerning an indication of the facts, evidence and arguments presented in support of the grounds is fulfilled only if there is sufficient indication of the relevant facts, evidence and arguments for the soundness of the opponents' reasoning to be properly understood by Opposition Division and patent proprietor without further investigation. This was held not to be the case where the opponents cited 16 documents without indicating what particular statements therein were alleged to destroy the novelty of the claimed invention or to form the basis for an argument on obviousness. Opposition Division and respondents were then at a loss as to where to start examining the opponents' allegations. Any such statement of grounds amounted to an invitation to the Opposition Division to carry out further researches in those documents ex officio in the hope that it would formulate some arguments of its own against patentability. That, however, was a task for the opponents, not for the EPO.

4. The Board wishes to make it clear that it stands by decision T 222/85. At the same time, the Opposition Division is wrong to base its ruling on that decision, the facts on which it was based not being comparable with those of the present case. In this case the opponents cite two documents in support of their opposition. In contrast to T 222/85, however, the opponents do more than merely refer to the two documents: they discuss each of them in detail over five pages, quoting page, line, figure or table for the points they consider important. Such a statement of grounds complies with the requirement set out in Rule 55(c) EPC concerning indication of the facts, evidence and arguments presented in support of the grounds.

5. The fact that the grounds for the opposition do not deal with component C of the claimed binder because they were filed in the form of a copy of the notice of opposition to the German patent, whose subject-matter can be worked even without that component, does not affect the Opposition's admissibility. However, it might be relevant to a substantive assessment of its merits. The Board repeats its statement in decision T 222/85 that the question whether an opposition fulfils the requirements of Rule 55(c) EPC must be distinguished from the question of the strength of the opponent's case. In this case the Opposition Division has not taken that distinction into account. An opponent is entitled to challenge a patent for a substance whose manufacture involves reacting four components by attempting to show that components A, B and D lack novelty or inventive step in order to conclude that the patent as a whole should be revoked. Where - as in this case - such an opposition is supported by sufficient facts, that is to say the alleged lack of novelty or inventive step is clear from certain documents and reference is made to the relevant passages therein, then there is no doubt as to the admissibility of such an opposition. It is quite another question whether that case as made out in the notice of opposition is also sufficient to bring about the patent's revocation. That question has to do with the merits of the opponents' case; after all, it might not have been necessary for the opposition to consider component C at all in order to be successful. On the other hand there might be no doubt about the invention's patentability - even assuming the opponents' submission to be right - because it consists precisely in the obligatory addition of component C. Those are questions concerning the merits of the opposition case but not its admissibility; after all, an opposition is not inadmissible because the facts adduced are not conclusive and therefore cannot constitute grounds for revoking the patent. The contested decision must therefore be set aside.

6. Under Rule 67 EPC the reimbursement of appeal fees is to be ordered if the Board deems an appeal allowable and such reimbursement is equitable by reason of a substantial procedural violation. Those requirements are fulfilled in the present case. The Opposition Division gave as its reason for holding the opposition inadmissible that there was no causal connection between the opposition, which treated component C as an optional characteristic, and the granted patent, so that the grounds could not be directly understood. That finding alone is wrong: as already stated, admissibility within the meaning of Rule 55(c) EPC does not depend on an opponent's having to consider all the characteristics of a claim. In addition, the Opposition Division's finding in the contested decision that the opposition could not be directly understood is blatantly at odds with its own conduct during the opposition proceedings held before it over no less than two years. The Board simply cannot understand how it is possible to conduct substantive opposition proceedings for more than two years - as the relevant communications of 24 March and 27 November 1987 show - without apparently understanding what the substance of the opponents' case was. Moreover the patent proprietor had no difficulty in understanding the substance of the opponents' case; nor are such difficulties apparent to the Board. After all, the Board pointed out in Decision T 222/85 that it was in the public interest for opposition proceedings to be prosecuted as rapidly as possible. Rule 55(c) EPC also serves that purpose. Applying it in order to terminate the proceedings on formal grounds when the case had already reached the decision- making stage twists the meaning of that provision back to front. Procedural law is not an end in itself but serves the purpose of deciding proceedings rapidly and as justly as possible. It therefore appears fair to the Board to order the reimbursement of the appeal fee even in the absence of a request to that effect from the appellants.

ORDER

For these reasons, it is decided that:

1. The Opposition Division's decision of 19 October 1988 is set aside.

2. The appeal fee is to be reimbursed.