T 0376/90 (Polymer solution) of 8.9.1993

Summary of Facts and Submissions

I. European patent No. 0 059 106 in respect of European patent application No. 82 300 927.9, which had been filed on 23 February 1982 claiming three Japanese priorities, viz. JP 25 753/81 dated 23 February 1981, JP 79 872/81 dated 25 May 1981 and JP 85 111/81 dated 2 June 1981, was granted on 10 June 1987, on the basis of 15 claims, of which Claim 1 read as follows:

II. Notice of opposition was filed on 25 February 1988, objecting inter alia to lack of any inventive step of Claim 1 (cf., eg, page 3, lines 19 to 28).

III. By an interlocutory decision of 28 December 1988 the Opposition Division held the opposition to be admissible and stated that this decision could only be appealed together with the final decision (Art. 106(3) EPC). In its final decision, given at the end of oral proceedings held on 8 December 1989 during which Claim 1 had been amended, and issued on 5 March 1990, the Division revoked the patent.

The Opposition Division stated that the request for revocation clearly defined the extent to which the patent was opposed and that the grounds of opposition were sufficiently identified (Art. 100(a) and (b) EPC); and an indication of the facts, evidence and arguments in support of the grounds was adequately given by the cited documents together with the various statements of the opponent linked to specific passages therein.

IV. On 2 May 1990 an appeal was lodged against said decision together with payment of the prescribed fee. On Monday, 16 July 1990, a statement of grounds was filed.

In these grounds of appeal and during further proceedings, especially the oral proceedings on 8 September 1993, the appellant continued to contest the admissibility of the opposition, relying in particular on decision T 222/85 (OJ EPO 1988, 128).

The notice of opposition had to present the facts, evidence and arguments in a way to enable the patent proprietor and the Opposition Division to examine the alleged ground for revocation without recourse to independent enquiries. Unsubstantiated assertions or a mere reference to patent documents as in the present case were not enough.

V. The respondent disputed the appellant's arguments concerning alleged inadmissibility (Rule 56(1) EPC), since the course of the opposition proceedings clearly showed that the appellant as well as the Opposition Division understood the grounds of opposition.

VI. The appellant requested that the decision under appeal be set aside and that the patent be maintained on the basis of the request submitted during the oral proceedings and subsidiary claims and description to be adapted.

The respondent requested that the appeal be dismissed.

Reasons for the Decision

1. The appeal is admissible.

2. The first question to be decided is whether the opposition was admissible, and whether it was correct for the preliminary decision on this point to be made appealable only together with the final decision.

2.1 As to the latter point, the Opposition Division decided on the admissibility in an interlocutory decision within the meaning of Article 106(3) EPC, i.e. a decision which did not terminate the proceedings as regards one of the parties. According to the clear language of that provision such an interlocutory decision can only be appealed together with the final decision, unless the decision allows separate appeal. Whether to allow such a separate appeal was within the discretion of the Opposition Division. The Board is of the opinion that this discretion under Article 106(3) EPC was properly exercised by the Opposition Division with a view to enabling a decision on the substantive issues to be reached as soon as possible.

2.2 The appellant's request that the notice of opposition be rejected as inadmissible was based on Rule 56(1) in conjunction with Rule 55(c) EPC, specifying that the notice of opposition shall contain:

i. a statement of the extent to which the European patent is opposed; and

ii. of the grounds on which the opposition is based; as well as

iii. an indication of the facts, evidence and arguments presented in support of these grounds.

2.2.1 As to point (i), the Board proceeds on the accepted principle that statements are to be interpreted in the way that an addressee would understand them taking into account the surrounding circumstances ("objektiver Erklärungswert"; cf. decision T 1/88 of 26 January 1989, not published).

It has been the general practice, in past cases where patents were opposed without an explicit statement of the extent to which they were opposed, to indiscriminately interpret the absence of such statement as an indication of the opponent's intention to oppose the patent concerned in its entirety. In view of the Enlarged Board's decision G 9/91 (OJ EPO 1993, 408) holding that the power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC, it may be necessary in future to scrutinise such extent more carefully than in the past, in order to ensure that the EPO does not exceed its power under the EPC. It therefore appears questionable whether the above-referred "liberal" practice can be continued. In the extreme, where the extent to which a patent is opposed is in serious doubt, this may indeed lead to a rejection of an opposition as inadmissible.

In the present case this point of law need not be decided, however, because there can be no such serious doubt.

The patent contained only one independent claim, Claim 1, and this as well as the subject- matter of dependent Claims 4, 5, 6 and 7 was expressly attacked in the notice of opposition, which also contained general statements to the effect that the solutions claimed to the problem of polymer adhering to the walls were derivable from the prior art. The opponent did not indicate that it would be content if the patent were maintained on the basis of a more restricted main claim. In these circumstances the Board takes the view that it is implicit that the opponent was seeking the revocation of the patent in its entirety.

2.2.2 The Board is also satisfied that items (ii) and (iii) are met. Since it is sufficient if the notice of opposition mentions and substantiates one of the opposition grounds of Article 100 EPC, the Board simply refers to the attack of lacking inventive step (Article 56 in conjunction with Art. 100(a) EPC). This ground was mentioned on page 3, line 24, of the notice of opposition. Facts and evidence were provided in the form of various prior art documents cited, summarised and commented on in the notice of opposition. The attack on Claim 1 was developed starting from the problem specified in the patent specification, arguing that viscosity was responsible for the indicated problems, and that a man skilled in the art would know how to manipulate viscosity and thus arrive at the claimed solution.

While the argumentation in the seven page statement of opposition might have been clearer, there was no failure in this case to comply with Rule 55 EPC. The facts of decision T 255/85 were quite different.

3. ...

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division with the order that the proceedings be continued on the basis of the Claim 1 submitted during the oral proceedings.