T 0275/89 (Steel radiators) of 3.5.1990

Summary of Facts and Submissions

I. On the basis of European patent application No. 85 100 650.2, filed on 23 January 1985 and claiming the priority of an earlier application which was filed on 21 March 1984 (DE-84 085 99U), European patent No. 0 158 010 with a single claim was granted on 28 October 1987. The claim reads as follows: "Component for steel radiators ..."

II. On 14 April 1988 the respondents (opponents) filed notice of opposition to the patent as granted, requesting its revocation on the grounds of lack of inventive step. In support of their submission...

III. In a decision dated 11 April 1989 the Opposition Division revoked the patent. ...

IV. On 19 April 1989 the appellant (patent proprietor) filed an appeal against this decision and paid the appropriate fee. The statement of grounds was filed on 22 July 1989. The appellant requested:

1. That the contested decision be set aside and the patent maintained as granted.

2. That the appeal fee be reimbursed.

3. That the case be remitted to the Opposition Division.

4. That the foregoing requests 2 and 3 be decided upon first.

5. In the alternative, that a date be appointed for oral proceedings.

V. With regard to the request for reimbursement of the appeal fee, the appellant submitted:

(i) that the Opposition Division had failed to comply with Article 101(2) and Rule 58(3) EPC

(ii) that the principle of the right to submit comments had been violated and that serious procedural irregularities had therefore occurred.

In substantiation of his case, the appellant argued that the provisions of Article 101(2) and Rule 58(3) EPC could only be interpreted as meaning that, before taking a decision, the Opposition Division should inform the patent proprietor, in at least one communication, as to why it considers the patent should not be maintained. In the present case, the Opposition Division neglected to do this. Furthermore, the period between the receipt on 10 March 1989 of the opponent's letter, dated 22 February 1989, and the date on which the decision was issued, i.e. 11 April 1989, was too short to allow the appellant to present substantive comments in due time, added to which the decision had in fact been taken long before the date it was issued. The submission dated 10 April 1989 had not been taken into account in the decision.

VI. In his statement of grounds for appeal, and in several further written statements, the appellant commented on the Opposition Division's conclusion that the invention did not involve an inventive step. The substance of his remarks was as follows: ...

VII. In a communication from the Board dated 22 January 1990 attached to the summons to oral proceedings on 3 May 1990, the parties were informed that in the Board's interim view, the disclosures of D1 and D2 indicated a lack of inventive step in respect of the subject-matter of the sole claim.

VIII. In a fax message received by the EPO at 15.16 hrs on 30 April 1990, the appellant's professional representative requested an adjournment of the oral proceedings sine die, on the grounds that the patent proprietor was suffering from acute illness, and that his participation in the oral proceedings was necessary.

This request was refused by the Board. At the oral proceedings which subsequently took place on 3 May 1990, no one appeared on the part of the appellant.

IX. In the written proceedings and during the oral proceedings, the respondents made the following observations: ...

X. The respondents requested that the patent proprietor's appeal should be dismissed. ...

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rules 1(1) and 64 EPC. It is therefore admissible. Procedural Points

2. Request on the part of the appellant for an adjournment of oral proceedings sine die.

2.1 In the notice of the Vice-Presidents Directorates-General 2 and 3 dated 14 February 1989 concerning oral proceedings before the EPO (OJ EPO, 1989, 132), it was pointed out that the Office intends to maintain its policy of bringing cases to a conclusion as quickly as possible (as, moreover, expressly demanded by the appellant in Section VIII of the statement of grounds for appeal).

In the Board's view, this presupposes that when a summons to oral proceedings has been issued, a request to change the date fixed for the proceedings can only be granted in case of unforeseen, exceptional circumstances which either make it impossible for proceedings to take place (for example, in the event of the professional representative or an unrepresented party suffering from acute illness) or which might have a material bearing on the course and outcome of the proceedings (such as the unforeseen inability of an important witness or an expert to attend). In the present case, the illness of the patent proprietor did not make it impossible for proceedings to take place, since he had signed a general authorisation appointing a professional representative which would have secured his presence in the legal sense. The fact that, although he had appointed a professional representative, the appellant might still have taken part in the proceedings himself does not alter the position. Concerning the question whether the presence of the appellant might have had a material bearing on the decision which was to be taken, the Board notes that there was nothing whatever in the fax message received on 30 April 1990 to support the assertion that the appellant's participation in the oral proceedings was necessary. Given that the technical facts of the case were clear, and in view of the extensive written comments already presented by the appellant on the technical issues and questions of patent law under consideration, the Board has been unable to ascertain any circumstance which would have made it necessary for the patent proprietor to be present at the proceedings.

In considering this issue, it must be borne in mind that acts or comments by the patent proprietor in the proceedings cannot be considered as acts or statements by a witness or expert. Summing up, the Board's position is as follows: if postponement of oral proceedings is requested, the fact that, according to a professional representative, the represented party (in this case the patent proprietor) is suffering from acute illness and that his participation in the proceedings is necessary, is not in itself a sufficient reason - at least without further particulars concerning the circumstances which make it necessary for the represented party to participate in the proceedings - for adjourning the proceedings. The request for the oral proceedings to be adjourned sine die accordingly had to be refused. Because of the short time available, it was not possible to give a prior decision in writing on this request. Given this state of affairs, under Rule 71(2) EPC the proceedings had to be continued without the appellant.

3. Appellant's requests 2 to 4

3.1 Regarding these requests, the Board considers it expedient to enquire, before examining the actual appeal, whether a procedural irregularity has occurred on the part of the Opposition Division which would justify remitting the case to the latter instance and reimbursing the appeal fee.

3.2 In support of his objection that his right to submit comments had been violated, the appellant expressed the view that under Article 101(2) and Rule 58(3) EPC, he had a legitimate claim to be informed, in at least one communication, as to why it was considered that the patent should not be maintained. This view is not supported by the aforementioned provisions. The Board is of the opinion that Article 101(2) EPC does not require, as a matter of principle, that a communication stating why it is considered that the patent should not be maintained be issued in every case, but only in those cases where this is "necessary". In the Board's opinion, such a "necessity" can only arise in respect of a further enquiry into the facts, or on the basis of Article 113(1) EPC, which stipulates that the decision may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Consequently, the Opposition Division is only obliged to issue a communication if it deems this to be necessary, for example in order to raise for consideration new substantive or legal grounds which have not been advanced before, or to point out any existing ambiguities. Rule 58(3) EPC, which merely contains instructions concerning the content of any communications that may have to be issued, adds nothing to the above consideration of principle. Hence in the Board's view, the provisions of Article 101(2) EPC and Rule 58(3) cannot be interpreted as meaning that the Opposition Division is obliged in every case to issue at least one communication.

3.3 In the present case, the review of the substantive aspects of the case shows that the documents DE-U-1 994 815 (D1) and DE-U- 1 915 661 (D2) cited in the decision were already mentioned in the notice of opposition, dated 11 April 1988, together with an assessment of their substantive and legal significance. The patent proprietor had sufficient opportunity to comment on this aspect (see the submission dated 18 January 1989). Moreover, the decision of the Opposition Division was based solely on the manifest disclosures of D1 and D2; in particular, regarding D2, the decision refers only to the written documents (i.e. without the aid of the photograph which was presented later). So far as this aspect is concerned, therefore, a violation of Article 113 EPC did not occur. Concerning the further objection that the interval between the notification of a submission from the opponents and the date the decision was issued was too short to allow the appellant to file observations, the Board notes that the Opposition Division waited for somewhat longer than a month before taking its decision, and that, contrary to the appellant's view, the date on which the Opposition Division began its preparations for the decision is of no consequence: the sole issue of importance is the date it was issued, prior to which any further statements by the parties could be taken into consideration. In the Board's view, in the case of a communication which was issued for information purposes only and without setting a time limit for response, a period of one month (which in the present case was exceeded) suffices as a rule to comply with the requirements of Article 113 EPC in this respect also. In the present case, at any rate, no circumstances are apparent or have been advanced such as could have made it impossible for the appellant to file observations on the arguments of the respondents, which remained within the scope of the previous discussion. In view of the above findings, the appellant's requests 2 and 3 cannot be granted.

Substantive examination of the appeal

4. ...

5. Novelty

6. Inventive step ...

ORDER

For these reasons it is decided that:

1. The appeal is dismissed.

2. ...

3. The respondents' application for costs is rejected.