T 0097/90 (Lubricating agents) of 13.11.1991

Summary of Facts and Submissions

I. The grant of European patent No. 0 145 150 in respect of European patent application No. 84 306 559.0 was announced on 13 January 1988 (cf. Bulletin 88/02). ...

II. Notice of opposition was filed on 15 October 1988 requesting revocation of the patent on the ground of lack of an inventive step and on no other ground. The opposition was supported by the following documents:

(1) Derwent Abstract 26 384 W/16, based on JP-A-48 053 093,

(1a) Translation of Table 1 of JP-A-48 053 093,

(2) US-A-3 234 252,

(3) DE-B-2 149 715,

(4) DE-A-2 502 155, and

(5) GB-A-1 371 956

which are relevant to the present decision.

III. By a decision dated 18 December 1989, the Opposition Division rejected the opposition, holding that the subject-matter of Claim 1 was novel. ... It also held that the subject-matter of Claim 1 involved an inventive step. ...

IV. A notice of appeal was filed against this decision on 6 February 1990 and the appeal fee was paid on the same date. A statement of grounds of appeal was submitted on 26 April 1990.

V. The appellant argued that it would be obvious to the skilled person to replace the polysiloxanes of the compositions according to document (1) by the present polysiloxanes of formula (1), because ...

VI. The respondent defended the presence of the requisite inventive step ...

VII. During oral proceedings held on 13 November 1991 the appellant introduced lack of novelty as a new ground of opposition (cf. point II above), pointing out that the claimed compositions were made available to the public by means of the disclosure of document (2) cited by the appellant in his notice of opposition.

Despite its strong disapproval of the appellant's conduct in raising a new ground of opposition and mindful of its discretionary power to disregard all late-filed matter (cf. "General principles for opposition procedure in the EPO", OJ EPO 1989, 417, particularly paragraphs 2 and 13, and T 182/89, OJ EPO 1991, 391, as well as T 326/87, OJ EPO 1992, 522, and T 611/90, OJ EPO 1993, 50), the Board decided to admit the late-submitted matter, largely because the Board and the respondent were clearly in the position to deal with it, as well as for the reasons set out in paragraph 2 of this decision.

In relation to the novelty objection, the respondent admitted that document (2) disclosed constituents in amounts falling within the scope of the claimed components A, B and C, but he nevertheless argued that the specific claimed compositions could only be deduced from this document by ex post facto analysis.

VIII. The appellant requested the impugned decision to be set aside and that the patent be revoked.

The respondent requested that the appeal be dismissed and the patent be maintained as granted, save ...

IX. ...

Reasons for the Decision

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

2. At the start of the oral proceedings the appellant sought to introduce a totally new ground of objection, namely that of prior publication. He freely admitted that this ground could well have been submitted and argued by him before the Opposition Division, but was unable to offer any explanation why he had not done this.

This late submittal of a new ground of objection, amounting to the raising of a totally fresh case, raises the question of the function of appeals under the EPC.

It is sometimes argued in this connection that the peremptory wording of Article 114(1) EPC:

"In proceedings before it the European Patent Office shall examine the facts of its own motion ..."

means that the Boards of Appeal have to conduct what, in effect, are re-hearings of the first instance proceedings, with unfettered right, and indeed an obligation, to look at all fresh matter regardless of how late it was submitted. In the Board's judgment such an interpretation of Article 114(1) is out of the context not only of the remainder of the Article, namely Article 114(2), but also of the context of Article 111(1) EPC. When Article 114(1) is construed within its proper context, it becomes evident that there is a clear limit to the scope of any new matter that may be introduced into an appeal by the parties or by the Board itself, because cases on appeal must be, and remain, identical or closely similar to those on which first instance decisions have been rendered.

There is clear support for the above interpretation in the Board's jurisprudence, in cases such as T 26/88, OJ EPO 1991, 30, T 326/87, OJ EPO 1992, 522, and T 611/90, OJ EPO 1993, 50, as well as in a number of unpublished cases, e.g. T 137/90, T 38/89 and T 153/85. It follows that regardless of what arguments, facts, evidence or requests the Boards, in their judicial discretion, choose to admit into their proceedings, these proceedings must always remain appeal proceedings. A valid description of what appeal proceedings are is set out in paragraph 12 of the reasons of T 26/88 where it is stated: "... the essential function of an appeal is to consider whether a decision which has been issued by a first instance department is correct on its merits ... it is not normally the function of a Board of Appeal ... to examine and decide upon issues in the case which have been raised for the first time during appeal proceedings". This narrow interpretation of Article 114, and in particular of Article 114(1), finds further support in the wording of Article 111(1) EPC, last sentence, which clearly envisages that there will be cases which will need to be referred back by a Board of Appeal to the first instance, which reference would be totally nugatory were the Boards of Appeal enjoined to investigate all new matter, regardless of its time of introduction into their proceedings, or even to conduct a roving and exhaustive enquiry into matters not submitted at all to them by the parties. In other words, such a blanket obligation to look at all matter, however late filed, would render the function of the first instance departments either superfluous, or delegate their role to merely providing a preliminary opinion for subsequent judicial review and decision by the Boards of Appeal.

Nevertheless, the course of action to be followed by the Boards of Appeal in dealing with late-filed matter is seldom clear cut. For example, in the above-mentioned case of T 326/87, the Board held that where fresh evidence, arguments or other matter filed late in the appeal raised a case substantially different from that decided by a first instance, that case should normally be referred back to the first instance in order to allow the parties two levels of jurisdiction. However, in its decision of T 611/90, also previously referred to, the Board of Appeal interpreted the criterion "normally" as meaning that such a reference back should be made only where this was demanded by fairness to the parties. In that case, the Board did decide to refer a totally new issue, never before argued, supported, let alone pleaded (one of prior public use) to the first instance, with an award of costs against the party responsible for its tardy introduction into the appeal proceedings. The reason for this decision is, of course, that the raising of a totally fresh ground of appeal, as is the case in the matter here under appeal, is the most extreme way of presenting a fresh case: late filed facts, evidence, requests and arguments may or may not erect such a new case, but the raising on appeal of a totally new ground of appeal must, of necessity, have this effect.

It does not, however, follow from T 611/90 that all cases where a new ground of objection is raised late in the appeal must be referred back to the first instance. On the contrary, in the Board's judgment such reference should be made only where the admittance of the new ground into the appeal proceedings would result in the revocation of the patent.

This approach is clearly consonant with the reasoning of decision T 416/87, OJ EPO 1990, 415, see paragraph 9 of the Reasons, where the Board stated "... a document which is relied upon by the opponent for the first time during the appeal stage should ... normally be referred back to the first instance ... where the Board considers that a newly introduced document is so relevant that the maintenance of the patent is at risk". The reason for this approach, clearly, is that the Board's decision to revoke a patent would be final.

In cases where the maintenance of the patent would not be put at risk, the Board has two courses of action open to it: (a) refuse to admit the fresh ground of objection; (b) admit the fresh ground into the appeal proceedings, and decide it against the opponent. In the Board's view, the latter course of action is generally preferable, because it leads to detailed reasons being made available (in the written decision), which may be of assistance in any subsequent litigation before the national courts. There may of course, as was the case in T 611/90, be situations where the very nature of the late-raised ground of objection is such as to make it impossible for the Board to arrive at even a preliminary decision, because the issue hinges totally on the credibility of evidence which the patentee has had no time to consider, let alone attempt to rebut. In the present case, the fresh ground is one of prior publication, and although the patentee was able to express only a preliminary view, and lead only outline arguments in response to those put forward by the opponent, the Board has been able to come to a decision on the matter on the basis of those arguments, as well as of its motion pursuant to Article 114(1) EPC.

3. The issues to be dealt with are, therefore, whether the subject-matter of Claim 1 is novel and involves an inventive step.

4. The novelty of the subject-matter of Claim 1 has been disputed by the appellant on the basis of document (2).

In these circumstances the Board holds that document (2) does not disclose the specific combination of the three mandatory components defined in Claim 1 of the opposed patent.

In this connection it is observed by the Board that it must be borne in mind that document (2), and the particular constituents disclosed therein, have been mentioned by the appellant with hindsight of the claimed compositions, and that the presence of the constituents mentioned in document (2) which fall within the scope of the claimed compositions, does not necessarily rule out a patentable selection from the vast range of possible combinations of these disclosed constituents.

ORDER

For these reasons it is decided that:

1. The appeal is dismissed.

2. The Opposition Division's decision is set aside.

3. The case is remitted to the Opposition Division with the order to maintain the patent as granted but subject to the amendments contained in the respondent's request.