T 0220/89 (Unity) of 28.2.1991

Summary of Facts and Submissions

I. Kernforschungszentrum Karlsruhe GmbH filed notice of opposition against European patent No. 0 023 585 (application No. 80 103 866.2).

II. By interlocutory decision dated 1 February 1989 the Opposition Division rejected the opposition and maintained the patent in amended form.

III. The Appellant (Opponent) filed an appeal against that decision. In support of its appeal it included the following arguments in its letter dated 14 January 1991:

1. Independent Claims 1, 3 and 4 as now worded were lacking in unity since the problem addressed by the contested patent was intended to be solved by three processes which did not form a single general inventive concept.

2. Documents filed in opposition proceedings were subject to Rule 61a EPC, according to which Part III, Chapter II, of the Implementing Regulations (i.e. Rules 26 to 36 EPC) had to be taken into account.

3. Rules 26 to 36 EPC were based on the assumption of a single invention (see Rule 27(1)(d),(g), (2) and Rule 29(1), (3), (5) EPC). Rule 29(2) EPC referred to Article 82 EPC. Rule 30 EPC set out criteria for interpreting Article 82 EPC.

4. Applying Rule 61a EPC to new documents filed in accordance with Rule 58(4) EPC thus meant that the unity of such documents had to be preserved. Since the claims as now worded were lacking in unity, they were not allowable under Article 102(3) EPC.

5. The claims as now worded should therefore be refused for this reason too.

Reasons for the Decision

1. Article 112(1)(a) EPC authorises the Board of Appeal to refer any question of its own motion to the Enlarged Board of Appeal if it considers that a decision is required on an important point of law.

2. In the present case the Appellant, citing the terms of Rule 61a EPC, has given lack of unity of the claims as now worded as the ground for refusal.

3. Rule 61a EPC lays down that Part III, Chapter II, of the Implementing Regulations shall apply mutatis mutandis to documents filed in opposition proceedings. Chapter II includes Rules 29(2) and 30 EPC, which both refer to Article 82 EPC. Rule 27(1)(d), (g), (2) and Rule 29(1), (3), (5) EPC are also based on the assumption of a single invention, as maintained by the Appellant. Prima facie, therefore, unity of invention should also be guaranteed in the case of documents filed in opposition proceedings.

4. A number of previous Board of Appeal decisions have dealt with the powers of the Opposition Divisions and Boards of Appeal under Article 102(3) EPC. In decision T 301/87 (OJ EPO 1990, 335), for example, one Board of Appeal established that Article 102(3) EPC required consideration by either instance as to whether the amendments introduced any contravention of any requirement of the Convention, including Article 84 EPC; however, Article 102(3) EPC did not allow objections to be based upon Article 84 EPC if such objections did not arise out of the amendments made (Reasons, point 3.8). Although the official English text of decision T 301/87 refers to contravention of "any requirement" of the EPC, only Article 84 EPC is explicitly mentioned. However, another Board has come to the conclusion, in connection with Article 82 EPC, that unity does not come under the "requirements of this Convention" mentioned in Article 102(3) EPC which the patent maintained in amended form must meet, as Article 82 EPC explicitly refers to the "European application" (T 49/89, not published). Moreover, it should be noted that Part D, Chapter V, point 2, of the Guidelines for Examination in the European Patent Office stipulates that any lack of unity must be accepted when a European patent is maintained in amended form.

5. The question therefore arises as to why Articles 82 and 84 EPC should be regarded differently. Both belong to Part III, Chapter I, of the EPC (Filing and requirements of the European patent application). Article 78 EPC (Requirements of the European patent application) states that a European patent application must contain one or more claims. It must be assumed that Article 84 EPC refers to the claims mentioned in Article 78 EPC, which means that Article 84 EPC should be interpreted in the same way as Article 82 EPC, i.e. it should only be applied to the European patent application.

6. Furthermore, the argument that a contravention of Article 82 EPC is not a ground for opposition or revocation applies likewise to Article 84 EPC.

7. For the purpose of interpreting Article 82 EPC it has been argued that the effect of this Article is purely fiscal. However, this point of view unduly simplifies the matter. A patent which relates to several inventions will inevitably contain in its description inconsistent statements about the essential features of the invention. In this connection, problems could arise with the application of Article 69(1) EPC.

8. It is thus clear that an explanation is required as to how to interpret Article 102(3) EPC with regard to Article 82 EPC when applying Rule 61a EPC.

ORDER

For these reasons it is decided that:

The following point of law is referred to the Enlarged Board of Appeal:

Even if Article 82 EPC refers to a European patent application and Article 100 EPC does not give unity of invention as a ground for opposition, does application of Rule 61a EPC (cf. in particular Rules 27, 29 and 30 EPC) in the case of an amended European patent mean that the unity of invention demanded by Article 82 EPC comes under the "requirements of this Convention" mentioned in Article 102(3) EPC which the patent maintained in amended form must meet?