T 0576/89 (Entitlement to request) of 29.4.1992

Summary of Facts and Submissions

I. The mention of the grant of the patent No. 0 087 210 in respect of European patent application No. 83 300 257.9 filed on 19 January 1983 and claiming the priority of 9 February 1982 from an earlier application in Canada, was published on 13 November 1985 on the basis of 21 claims, of which Claim 1 reads as follows:

II. On 26 June 1986 Opponent 1 filed a notice of opposition against the grant of the patent and requested revocation thereof in its entirety for lack of inventive step under Article 100(a) EPC.

On 10 July 1986 Opponent 2 lodged an opposition to the granted patent and requested revocation thereof in its entirety on the ground that the requirement of inventive step under Article 100(a) EPC was not met.

These objections, which were emphasised and elaborated in later submissions as well as during oral proceedings, were based essentially on the following documents:

III. By an interlocutory decision delivered orally on 6 December 1988, with written reasons posted on 20 July 1989, the Opposition Division held that there were no grounds of opposition to the maintenance of the patent in amended form on the basis of the set of 6 claims submitted on 6 December 1988, which corresponded to the original process Claims 15 to 20 and wherein, additionally, the new main claim had been completed as follows: "... and ensuring in the resultant product a gel content of at least 75% by weight."

It was stated in that decision that the gel content of at least 75% by weight was an inventive feature, since it conferred improved low-temperature impact strength properties to the objects obtained by the rotational moulding process. That effect, which was regarded as surprising, was thus the basis of a selection invention.

IV. The appellant (Opponent 2) thereafter filed a notice of appeal against that decision on 4 September 1989 and paid the prescribed fee at the same time. In the statement of grounds of appeal filed on 17 November 1989 as well as during oral proceedings held on 29 April 1992 the appellant essentially argued that the identification of the desired gel content on its own could not confer an inventive step on a composition suggested by the combination of two teachings. The determination of the appropriate gel content resulted from the mere optimisation of a process and could have been made by anyone of ordinary skill in the art; it was nothing more than the known and accepted method of expressing the degree of cross-linking of polyethylene, as evident from the additional documents:

V. In its written submission filed on 5 March 1990 as well as during oral proceedings, the respondent (patentee) sought the maintenance of the patent in suit in the form granted, with the exception of Claim 21, the features of which had been incorporated into Claim 15, as its main request, and in the amended form, i.e. limited to the process Claims 1 to 6, as its auxiliary request. The respondent submitted also that the Opposition Division had been incorrect in rejecting the patent on the basis of the main request submitted at the oral proceedings before the Opposition Division.

VI. In its reply filed on 29 June 1990 to the respondent's statement requesting the Board of Appeal to consider both the main request and the auxiliary request as they both had been before the Opposition Division, the appellant raised a procedural point, objecting that it was not open to the respondent, itself not having filed any appeal, to raise the issue of the allowability of the main request in the present appeal.

VII. By letter received on 11 November 1991, Opponent 1 informed the Board that it would not attend the oral hearing to which, as a party to the proceedings, it had been duly summoned.

VIII. The appellant requested that the decision under appeal be set aside and that the patent be revoked entirely.

The respondent requested that the decision under appeal be set aside and the patent be maintained on the basis of Claims 1 to 20 filed on 5 March 1990 as its main request, or, alternatively, that the appeal be dismissed.

Reasons for the Decision

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

Procedural matters

2. As set out in point III above, the decision of the Opposition Division did not deal with the main request, but was confined to what it described as "the final request of the applicant during the oral proceedings". At the oral proceedings before the Board the respondent's representative pointed out that he had not formally abandoned its main request, but had simply pursued the auxiliary request after the Opposition Division had stated orally that it would not grant the main request. The minutes of the oral proceedings before the Opposition Division confirm that, after an interruption of half an hour for deliberation, it rejected the main request, but regarded the auxiliary request as embodying an inventive step; however, whether subsequently the main request was formally abandoned or not is not specified. The appellant could not provide any information in that respect either, since it did not attend the oral proceedings before the Opposition Division.

The Board is thus not in a position to decide exactly what took place at the oral proceedings before the Opposition Division. However, beside the fact that the respondent agreed with the text sent with the communication of 2 March 1989 pursuant to Rule 58(4) EPC (cf. reply of 30 March 1990) and did not itself file an appeal against the decision of the first instance, it did not raise any complaint against the procedure adopted by the Opposition Division. If it had objected that the Opposition Division had failed to comply with the requirements of Rule 68 EPC, by not giving reasons for its rejection of the main request, the Board would have had to consider referring the issue back to the Opposition Division. However, in the circumstances of the present case, it is clear from the reasoning given in paragraph 4 of its decision why it regarded features A to F of the main claim under consideration, i.e. the combination of features of Claim 1 of the main request, as being non-inventive, and that it was only feature (g), i.e. a gel content of at least 75% by weight, which distinguished the auxiliary request from the main request, which it regarded as inventive. Moreover, nothing suggests that the Opposition Division required the respondent to choose between (a) revocation of the patent on the basis of the main request, and (b) withdrawal of the main request and prosecution on the basis of the auxiliary request. Consequently, in the view of the Board, the requirements of Rule 68 EPC are met.

3. The appellant raised the procedural issue whether the non- appealing party, i.e. the party to the appeal by virtue of the provisions of Article 107 EPC, is entitled nonetheless to challenge that part of the decision against which he could have appealed, but did not.

3.1 The first matter which the Board needs to consider is the effect on an appeal of proposals for amendments made by a patentee in the course of an opposition procedure, in particular whether a patentee may support broader claims on appeal than were accepted by the Opposition Division. This topic is already the subject of a number of earlier decisions.

In decision T 123/85 "Incrustation inhibitors/BASF" published in OJ EPO 1989, 336, the Board took the view that in requesting that his patent be maintained in a limited form the patentee was merely trying to delimit his patent to meet objections expressed by the EPO or the opponents. However, by virtue of such limitation the patentee did not irrevocably surrender subject- matter covered by the patent as granted. It followed that a patentee, having offered a restrictive amendment in order to overcome an opposition, was entitled to reintroduce into his claims subject-matter which it had previously offered to delete, provided that such amendments did not constitute an abuse of procedure (Reasons for the Decision, points 3.1.1 and 3.1.2).

In the present case, the request that the patent be maintained as granted having been made by the respondent at the first opportunity, i.e. in reply to the statement of grounds of appeal, it cannot be regarded as an abuse of procedure.

The same line was explicitly followed in two later decisions, T 155/88 of 14 July 1989 (cf. point 2) and T 506/91 of 3 April 1992 (cf. point 2.4). In both, the right of a patentee to revert to the subject-matter of the broader claims was confirmed, unless the circumstances make it absolutely clear that it was the real and unambiguous intention of the patentee to abandon the broader subject-matter of the previous claims.

3.2 The next matter for consideration is whether it makes any difference if the patentee, seeking a broader claim on appeal, has not itself appealed, despite the fact that as the main request was refused, and the patent maintained on the basis of an auxiliary request, it was entitled to do so.

In the present case, the Board took the view that there was no requirement for the respondent to have filed a cross-appeal and considered the issue of the inventiveness of the subject-matter of both the main and auxiliary requests in the appeal.

It has come to the attention of the Board, however, that a decision, which although later in date was issued in writing earlier, took an opposite view on the need for a cross-appeal (T 369/91 of 15 May 1992). The Board relies on the case law and reasoning set out below in support of its decision on this issue.

In decision T 89/84 "Reimbursement of appeal fees/TORRINGTON" published in OJ EPO 1984, 562, the Board came to the conclusion that there was in fact no "procedural necessity" for a party to file an appeal against an adverse finding in a decision which, in its overall result, was favourable, since a Board of Appeal is required to examine the facts of its own motion and may consequently re-open any matter decided by the first instance (Reasons for the Decision, point 5).

That approach was confirmed in the decision T 73/88 of 7 November 1989 (OJ EPO 1992, 557). According to point 1 of the Reasons for the Decision, if a patentee in opposition proceedings has had his request that the patent be maintained upheld by the decision of the Opposition Division, he may not file an appeal against reasoning in the decision which was adverse to him, because he is not adversely affected by the decision within the meaning of Article 107 EPC. If, however, an appeal is filed by an opponent and the patentee wishes to contend that such adverse reasoning was wrong, it should set out its grounds for so contending in its observations under Rule 57(1) EPC in reply to the statement of grounds of appeal, by way of cross-appeal (cf. as well Headnote III).

3.3 Apart from existing case law, the fact that a respondent to an appeal can raise issues in the appeal other than those raised by the appellant is justified by reference to the provisions of the EPC.

Article 108 EPC imposes a stringent time limit for the filing of an appeal, without there being any provision in the Convention or the Rules thereunder for the filing of cross-appeals, or time limits for filing cross-appeals. This suggests that those who formulated the EPC took the view that the only procedural matter which needed to be regulated was whether or not an appeal was in being.

Once an appeal is in being, the Boards of Appeal have discretion under Article 114(1) EPC to consider issues other than those raised by the parties. Thus, a party, whether patentee or opponent, faced with a decision from an Opposition Division upholding a patent on the basis of an auxiliary request, is fully entitled to take the view that it is satisfied with the decision, to the extent that it does not wish to be troubled with an appeal. If, however, the opposing party puts it to the trouble of re-arguing the case on appeal, it is then entitled to challenge that part of the first instance decision which was adverse to it.

This interpretation is consistent with the general policy of the EPC, which avoids, as far as possible, deciding issues bearing on the substantive rights of the parties on the basis of procedural technicalities.

If the issues open to argument on appeal were to be limited to those raised in the grounds of appeal, subject to the opposing party having a right to argue other matters if, but only if, a cross-appeal had been filed within the basic time limit set by Article 108 EPC, there would be an incentive to file an appeal on the last day of the two-month time limit, so as to deny the opposing party the opportunity of filing a cross-appeal. The notion of allowing procedural tactics to have a decisive effect on the substantive rights of the parties is alien to the whole system of the EPC.

Taking as an example the common situation which arises when an opposition results in the patent being upheld as amended and an appeal is then filed by the patentee, but no cross-appeal is filed by the opponent, it is clear that the Board still has discretion, if appropriate, to take a different view of the case from the Opposition Division, and to revoke the patent in its entirety. It would be anomalous if the Board, contemplating revoking the patent, had to exclude any argument on that issue by an opponent (respondent), a party to the appeal by virtue of Article 107 EPC, solely because there was no cross-appeal, while at the same time dealing with precisely that issue of its own motion.

3.4 In the present case, the Board, therefore, felt it had every justification for dealing with the main request having regard to the fact that any decision on the auxiliary request had implicitly to deal with the issue of the inventiveness of Claim 1 according to the main request. In fact, although it was necessary for the Board to give its ruling on the procedural position at the beginning of the oral proceedings, the ultimate decision was not affected by that ruling.

4. ...

Main request

5. ...

8.5 In conclusion, the claimed subject-matter as defined in Claim 1 of the main request is nothing more than the modification of the compositions disclosed in document D(i) in accordance with the teaching of document D(g). That step being obvious in view of the technical problem to be solved, no inventive step can be acknowledged.

9. Claim 1 not being allowable, the same applies to the dependent Claims 2 to 14, which are directed to preferred embodiments of the subject-matter of the main composition claim and thus fall with it. The same applies to the process Claims 15 to 20, since a request can only be considered as a whole.

Auxiliary request

10. ...

11. In comparison with Claim 1 of the main request, Claim 1 of the auxiliary request differs by being formulated as a process claim and by the requirement of a minimum gel content of 75%.

The subject-matter of the main process claim, therefore, does not involve an inventive step.

12. Claim 1 not being allowable, the same applies to the dependent Claims 2 to 6, which are directed to preferred embodiments of the subject-matter of the main process claim and thus fall with it.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.