T 0387/89 (Cardioverter) of 18.2.1991

Summary of Facts and Submissions

I. The Appellant is the owner of European patent No. 0 060 117, the grant of which was opposed by the Respondent.

II. In the proceedings before the Opposition Division the Appellant requested maintenance of the patent in amended form on the basis of an amended set of claims filed on 10 December 1987.

Amended Claim 1 reads as follows:

"1. An implantable medical device for the electrical termination of tachyarrhythmia comprising:

Claims 2 to 5 are dependent upon Claim 1.

III. The Opposition Division revoked the patent on the ground that amended Claim 1 was lacking an inventive step having regard to documents:

D2: US-A-3 942 534, and

D3: "Deutsche Medizinische Wochenschrift", No. 14, April 1975, pages 731-734.

IV. The Appellant (Patentee) filed a notice of appeal against this decision including an auxiliary request for oral proceedings and set out grounds why the decision should be set aside. No observations were filed by the Respondent.

V. In a communication accompanying a summons to oral proceedings, the Board drew the parties' attention to the following additional documents:

D4: US-A-3 952 750; and

D5: EP-A-0 023 134.

These had been cited in the European search report. The Board notified the parties of its provisional view that documents D2 and D3 were less relevant, but that there were strong reasons why Claim 1 could not be maintained having regard to documents D4 and D5. A skilled person could be expected to arrive at the subject- matter of Claim 1 from a consideration of the device shown in document D4, by making the disclosed "means for producing the manually activated signal" "responsive to said (known) sensing means (producing a sense signal indicative of naturally occurring cardiac activity) for detecting cardiac tachyarrhythmia." The corresponding replacement of the known patient-activated means for producing a signal in the device of document D4 by the implanted automatic detection means of tachyarrhythmia known from document D5 might be regarded as a use of a known automatisation technology in a closely analogous situation, which use would be obvious to a skilled person.

VI. In response to this communication the Appellant declared that he would not be attending the oral proceedings, and he withdrew his provisional request for such oral proceedings. He maintained his request to set aside the appealed decision of the Opposition Division and to maintain the patent in its amended form, and he presented his comments supporting such request in written form. Thereupon, the oral proceedings were cancelled by the Board.

VII. In support of his request, the Appellant argued essentially as follows:

(a) There was no disclosure or suggestion in document D4 or document D5 of the specifically claimed arrangement of timing means, sensing means and detection means.

VIII. The Respondent requested that the appeal be dismissed without submitting any further comments or arguments.

Reasons for the Decision

1. The appeal is admissible.

2. Procedural matters

2.1 The two documents D4 and D5, which are referred to in paragraph V above as having been drawn to the attention of the parties in the Board's communication, were cited in the European search report, but were not specifically referred to by the Examining Division during the proceedings before grant. The only document which was specifically referred to by the Examining Division in its communication prior to grant of the patent was document D2, in order to ensure that it was acknowledged both in the description and within a two-part formulation of the main claim. Document D5 was acknowledged in the description as originally filed.

2.2 In Decision G 1/84 (OJ EPO 1985, 299), the Enlarged Board of Appeal stated that "opposition procedure is not designed to be, and is not to be misused as, an extension of examination procedure". Furthermore, in Decision T 198/88 dated 3 August 1989 (OJ EPO 1991, 254), it was held that a document taken into account in the procedure before the Examining Division is not automatically evidence to be considered in the opposition procedure, even if indicated as background art in the opposed patent.

Thus, in the Board's view, in opposition cases, neither an Opposition Division nor a Board of Appeal has any duty to re- examine the course of the proceedings before the Examining Division before grant, or to reconsider the relevance of documents cited in the European search report, if such documents have not been relied upon by the Opponent to support his grounds of opposition. This is because in opposition proceedings following grant of a patent, both the EPO and the parties are entitled to assume that the application has been properly examined before grant with respect to documents cited in the European search report. In particular, documents which are closely relevant and likely to provide grounds for refusal of the application should have been at least the subject of a communication from the Examining Division before grant. Of course, this is not intended to suggest that either an Opposition Division or a Board of Appeal should be inhibited from relying upon documents which were cited in the European search report and which were not the subject of such a communication. An Opposition Division or a Board of Appeal may introduce such documents into opposition proceedings even if not so relied upon by the opponent, if they have strong reason to consider that such documents do in fact provide evidence in support of a ground of opposition that is of such relevance that it could affect the outcome of the proceedings. So far as an Opposition Division or a Board of Appeal is concerned, in the Board's view this is the principal criterion against which it has to assess whether to introduce such documents into the proceedings under Article 114(1) EPC (although other factors may also require consideration in particular cases).

2.3 The present case falls within the criterion set out above, since the two documents D4 and D5 cited in the European search report, were not referred to by the Examining Division before grant, but were introduced into the appeal stage of these opposition proceedings by the Board of Appeal of its own motion under Article 114(1) EPC as being clearly of such relevance that they could influence the outcome of the decision to be made in the opposition proceedings.

2.4 The Board has also considered whether, having decided to introduce these documents into the proceedings during the appeal stage, it should exercise its discretion under Article 111(1) EPC to remit the case to the first instance for further consideration of these documents, in order to avoid the loss of an instance (see e.g. Decisions T 273/84, OJ EPO 1986, 346, and T 49/85, not published). Having regard to the fact that the Respondent did not ask for such remittal, and also having in mind the history of the case as set out above, the Board has decided not to remit the case.

2.5 Having now carefully considered the Appellant's observations in reply to its communication, in the Board's judgment not only is document D4 the closest prior art, but, furthermore, the combination of documents D4 and D5 is clearly decisive against maintenance of the patent, for the reasons given below.

4. Inventive step

4.6 In the Board's judgment the subject-matter of Claim 1 does not involve an inventive step within the meaning of Article 56 EPC.

5. Consequently, Claim 1 does not meet the requirements of Article 52(1) EPC and cannot form the basis of a patent maintained in amended form according to Article 102(3) EPC.

Claims 2 to 5 cannot be maintained because of their dependence on Claim 1.

ORDER

For these reasons it is decided that:

The appeal is dismissed.