T 0156/84 (Pressure swing adsorption) of 9.4.1987

Summary of Facts and Submissions

I.European patent No. 8 882 was granted on 30 December 1981 with 17 claims in response to the European patent application No. 79 301 597.5 filed on 7 August 1979. Claim 1, the only independent claim, was worded as follows:

“1. In the separation of a multicomponent feed gas mixture …

II. … On 30 September 1982 opposition was lodged against the patent by Linde Aktiengesellschaft (Opponent 2) on the grounds that the claimed process was lacking in inventive step having regard to

DE-B-1 544 009 (1)

DE-A-2 258 299 (2) and

DE-A-2 604 305 (3).

In a reply to the observations filed by the Patentee, filed on 23 August 1983, the Opponent 2 referred to a further document DE-C-588 885 (4) and in a later letter received on 2 February 1984 to yet another document DE-A-2 745 088 (5). In a communication pursuant to Article 101(2) and Rules 58(1) to (3) EPC, dated 23 November 1983 the Opposition Division stated that it had, pursuant to Article 114(2) EPC, disregarded the reference to DE-C-588 885 (document 4)

III. In a decision dated 3 May 1984 the Opposition Division rejected the opposition and maintained the patent unamended. In its decision the Opposition Division stated that it maintained its earlier decision to disregard document (4) and that for similar reasons it had decided to disregard document (5). Document (4) had been published in 1933 and document (5) on 20 April 1978. In the circumstances there would appear to have been no obstacle preventing access to these documents. The Opposition Division, being aware that the nine month period for opposition was intended to be long enough for a full case to be made out, had decided it would be inexpedient to the procedure to admit such late filed documents and arguments and they were therefore disregarded for the purposes of the decision.

IV. A notice of appeal was filed by the Appellant on 3 July 1984 against the decision of the Opposition Division, and the appeal fee duly paid. The Statement of Grounds, which made reference to yet another new document DE-B-1 259 844 (document 6), was filed on 25 August 1984. V.In this statement the Appellant (Opponent 2), quoting Part E, Chapter VI of the Guidelines for Examination, contended that in deciding on the admissibility of late-filed facts and evidence their relevance to the decision was one of several factors to be taken into account, and that it was clear from the language used in the Guidelines that when the Opposition Division intended to disregard any such late-filed facts and evidence using the powers conferred on it by Article 114(2) EPC it was obliged to inform the parties of its intention before deciding on the opposition. In the present case the Opposition Division did not inform the parties that they were going to disregard document (5), the fact that it had been disregarded only emerging on issue of the decision. The question therefore arose as to whether this omission on the part of the Opposition Division constituted a serious procedural violation justifying reimbursement of the appeal fee. Moreover, the reasons given under point 6 of the decision for the disregarding of documents (4) and (5) did not appear to be valid since they made no reference to the factual relevance of either of the two documents, even though Opponent 2 (the Appellant) had stressed the considerable relevance of document (5) to the judgment of inventive step. On the issue of inventive step the arguments advanced by the Appellant in the Statement of Grounds proceed from the disclosure in late-filed document (5) and rely additionally on the disclosures of documents (1) and (2) and on the document (6), referred to in IV. above

VI. In a response to the Statement of Grounds the Respondent (Patentee) drew attention to the wording of parts (1) and (2) of Article 114 EPC and contended that they were reconcilable only if the former were construed to mean that the facts which the EPO had to consider of its own motion were those submitted in due time, and the word “may” in part (2) to mean “shall except in exceptional circumstances” and pointed to the delays in proceedings, potentially extremely damaging to the Patentee, which might arise if Article 114(1) were interpreted otherwise. The Opposition Division had acted properly, since Article 114(2) gave them the absolute right to disregard the new citations and the opponents had no reason to expect these to be introduced into the proceedings since, though publicly available during the opposition period they were filed outside that period and were irrelevant. Also when introducing document (5) they withdrew their request for oral proceedings thereby constructively notifying the EPO that their case was concluded. …

VIII. At the oral proceedings, since the appellant insisted that at least document (5) should be considered in the proceedings, the chairman of the Board instructed the parties to first present their submissions on the question of whether or not the Opposition Division had acted improperly in not admitting documents (4) and (5) into the proceedings, and whether or not it had so acted, how these documents should now be treated. Having heard these submissions the Board found that the Opposition Division had been wrong in not admitting them without first considering their relevance to the issues to be decided. Therefore the case would be referred back to the first instance for further prosecution providing the Board shared the opinion of the first instance that the documents submitted by the opponents during the opposition period alone were not prejudicial to maintenance of the patent in unamended form. The parties then presented their arguments on this issue.

IX. The appellant requested that the decision under appeal be set aside and that either the patent be revoked (main request) or that the case be remitted to the Opposition Division (auxiliary request).

X. The respondent requested that either the appeal be dismissed and the patent maintained (main request) or that the case be remitted to the Opposition Division (auxiliary request).

Reasons for the Decision

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

2. Novelty and inventive step.

2.1 After a careful examination of the document (6), first referred to in the Statement of Grounds of Appeal, the Board finds it not to be relevant in the sense of leading the Board to a different decision and has, therefore, making use of the power conferred on it by Article 114(2) EPC, decided to disregard it since it was not submitted in due time.

2.2 Next the Board has to consider whether the subject-matter of Claim 1 is novel and involves an inventive step having regard to the disclosure in documents (1) to (3). …

2. 5 In view of what has been said above the Board considers the Opposition Division’s decision to maintain the patent unamended, in the face of the documents to have been justified.

3. Admissibility of documents filed after expiry of the opposition period.

3.1 In its decision using the powers conferred on it by Article 114(2) EPC the Opposition Division disregarded citations (4) and (5). In support of its argument that citations (4) and (5) filed after expiry of the opposition period were not submitted in due time the Opposition Division explained that the nine-month period was sufficiently long and the two citations had been publicly available for a long time, in point of fact since 1933 and 1978 respectively. The Board considers such treatment of citations mentioned after expiry of the opposition period to be irregular and not consonant with Article 114 EPC.

3. 2Paragraphs 1 and 2 of Article 114 EPC contain two different provisions: under Article 114(1) EPC the EPO has to examine the facts of its own motion without being restricted thereby to the facts, evidence and arguments provided by the parties and the relief sought, whereas Article 114(2) EPC empowers the EPO to disregard facts or evidence not submitted in due time by the parties concerned.

3.3 To some extent the two paragraphs are at variance with one another. If the EPO has to examine the facts of its own motion it must consider all the circumstances relevant to its decision. Article 114(1) EPC imposes no time limit on this obligation, which therefore applies for the duration of the proceedings. Article 114(2) EPC, on the other hand, allows facts not submitted in due time by the parties concerned to be disregarded. This apparent contradiction has to be resolved by careful interpretation of the provisions.

3.4 The Board considers that the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the possibility of disregarding facts or evidence not submitted in due time provided for in Article 114(2) EPC. This is evident from the wording of both provisions. That of Article 114(1) EPC: “ermittelt” in the German text, “shall examine” in the English and “procède” in the French, expresses an obligation whereas Article 114(2) EPC implies a discretion – the German text choosing the words “braucht nicht zu berücksichtigen”, the English text “may disregard” and the French “peut ne pas tenir compte”. The wording alone thus makes it clear that the provision in paragraph 1 has priority over that in paragraph 2.

3.5 Even in inter partes proceedings before the EPO, which is what opposition proceedings are, account must be taken not only of the interests of the parties involved; the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid. This is the real reason for the introduction of the principle of examination by the Office of its own motion in Article 114(1) EPC and of the provision of Article 115 EPC enabling third parties to present observations concerning the patentability of the invention in respect of which the application has been filed. The public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO. Taking the aforementioned principle to its logical conclusion, the EPO may not disregard any material at its disposal which is of relevance to an appraisal of the legal validity of a patent, which in turn means that in its decision the EPO must consider all the circumstances, irrespective of how and when it became aware of them.

3.6 The principle of examination by the Office of its own motion therefore does not allow essential facts, evidence and arguments to be disregarded merely because they were not submitted by a party within a time limit. That facts prejudicial to maintenance of a patent which the Opposition Division or Board has itself ascertained have to be considered at any time until a decision is pronounced is evident from the distinction drawn in Article 114(1) EPC between “the facts” on the one hand, and “the facts ….. which are submitted by the parties” on the other and the applicability of Article 114(2) EPC to only these last mentioned facts.

3.7 Another category of facts to which Article 114(2) evidently does not apply are those presented in observations by third parties concerning the patentability of the invention pursuant to Article 115(1) EPC, since it is clear from the sentence “That person shall not be a party to the proceedings before the European Patent Office” that such a person is not one of the parties referred to in Article 114(2). Furthermore there is no provision either in Article 115 or elsewhere in the EPC imposing any limit on the period within which such observations have to be presented or empowering the EPO to disregard facts which come to its notice in this way whenever they are presented. This serves to reinforce the view that Article 114(2) cannot apply to such facts since “due time” can have no meaning in respect of facts which do not have to be presented within a limited period. That the provisions of Article 115 apply not only to the period before grant but also to the post grant period is apparent from the reference in paragraph (2) of the article to communication of the observations to the applicant for or proprietor of the patent. In the Board’s view, a situation where facts submitted by a person who is not even aparty to the proceedings have to be considered by the EPO regardless of when they are submitted, whereas those submitted by the opponent after a specific time limit has expired do not, would be scarcely justifiable. It would be ridiculous if the opponent had to file documents found late through a third party in accordance with Article 115 EPC, if he wished to ensure that they would not be disregarded under Article 114(2) EPC. Furthermore, seen objectively, it is in the general interest of all, including the patent proprietor, that his patent be examined against the background of the entire prior art known in the course of the opposition proceedings, as that would strengthen his legal position in any future infringement proceedings in which the infringer may plead that the patent lacks legal validity.

3.8 Even though therefore, under Article 114(1) EPC the EPO has to consider without limit as to time all circumstances which come to its attention in whatever way and which are relevant to its decision, it does not follow that Article 114(2) EPC is meaningless. That provision enables the Opposition Division or Appeal Board in its decision to designate citations referred to by the opponent after expiry of the time limit as not material – i.e. having no bearing on the decision – without having to give detailed reasons, as it does in the case of citations referred to in due time. The Opposition Division or Board has however to examine objectively the relevance of the citation introduced late into the proceedings and has then to communicate the results to the parties at least in its decision. This has not happened in the present case. In the contested decision the Opposition Division has disregarded documents (4) and (5) simply because they were not cited within the opposition period. Nothing in the decision indicates that the Opposition Division considered the substance of the documents introduced late into the proceedings to be not relevant. No final decision on the opposition can be taken until such an examination has been performed. In the circumstances the Board considers it proper that this should be done by the Opposition Division thus ensuring the right of both parties of a full examination of the opposition before two instances.

3.9 Therefore, despite the conclusion of the Board reached in point 2.5 above neither the Appellant’s nor the Respondent’s main request can be allowed. The Board has decided to make use of the powers conferred on it by Article 111 EPC to refer the case back to the Opposition Division for further prosecution in accordance with the auxiliary request of both parties.

3.10 If the Opposition Division in objectively examining the relevance of documents (4) and (5) concludes that they alone or in combination with the state of the art cited within the time limit for filing the opposition do not allow the patent to be maintained without amendment it must base its decision on these citations. If it concludes that the documents introduced late do not prejudice the maintenance of the patent in its granted form it needs merely communicate to the parties in its decision the results of its objective examination with a reference to their late introduction.

3.11 This presupposes that the opponent did not submit documents (4) and (5) in due time. Facts, evidence and arguments are not deemed not to have been submitted in due time (“verspätet vorgebracht”, “n’ont pas été produites en temps utile”) simply because they have not been submitted during the opposition period. On the contrary, some blame must also be attachable to the opponent for his failure to mention documents (4) and (5) within the opposition period. Although the Opposition Division is aware of this fact it does not give adequate reasons for concluding that the documents were not filed in due time but merely refers to the lengthy nine-month opposition period and the existence of the documents since 1933 and 1978 respectively. However, documents are deemed to be introduced late only if, in the present case, the opponent could have mentioned documents (4) and (5) within the opposition period or earlier than in fact he did. There is nothing to indicate this. If it could be assumed that careful preparation of the opposition proceedings would have revealed to the opponent documents (4) and (5) – and this is what the Opposition Division would seem to be implying in the reasons it gives for claiming their late introduction – it would have been his task to set out the circumstances that prevented him from mentioning the two documents earlier.

3.12 The Board considers moreover that too strict a standard should not be set when a decision is taken on whether to admit citations submitted outside the opposition period. There is the major risk of proceedings being unduly delayed if the first instance judges facts, evidence or arguments not to have been submitted in due time, the Board of Appeal disputes this and the case is referred back to the first instance. For these reasons the first instance should use the powers conferred on it by Article 114(2) EPC only if it can be clearly established that they had not been submitted in due time.

3.13 The Board considers it not possible to order reimbursement of the appeal fee in the present case since there has been no substantial procedural violation within the meaning of Rule 67 EPC. Although the Board feels that the Opposition Division did not act in accordance with correct procedure it cannot be held guilty of a substantial procedural violation because, to the knowledge of the Board, there is as yet no standardised procedure for dealing with documents not submitted in due time in proceedings before the first instance and the Guidelines for Examination in the European Patent Office merely state that in deciding whether to admit the facts or evidence not filed in due time their relevance to the decision, the state of the procedure and the reasons for the belated presentation are to be considered (cf. Part E-VI, 2).

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 for further prosecution.