T 0185/88 (Surface active agents) 22-06-1989
I. European patent No. 39 859 was granted in respect of European patent application No. 81 103 329.9, which had been filed on 2 May 1981 claiming priority from a prior application filed in the Federal Republic of Germany on 12 May 1980, on the basis of five claims. Claim 1 reads as follows: "1. Process for manufacturing polyglycol ether mixed formals of formulae I or II..." Mention of the grant of patent was published on 16 July 1986 in Patent Bulletin 86/29.
II. On 28 March 1987 notice of opposition was filed requesting the revocation of the whole patent on the grounds of lack of inventive step, in support of which it cited only the subsequently published document DE-C-2 523 588. The relevant content of this document is identical to document DE-A of the same number, which was published before the priority date of the contested patent and is hereinafter referred to as (1).
III. By a decision dated 16 March 1988 the opposition, deemed admissible for reasons of procedural economy despite serious reservations, was rejected ..
IV. An appeal, accompanied by the prescribed fee, was lodged against this decision on 29 April 1988. In the statement of grounds received on 8 July 1988 it was alleged that ...
V. The respondents contested the admissibility of the opposition, pointing out that it was supported only by a subsequently published document...
VI. The appellants request that the decision under appeal be set aside and the contested patent be revoked ... The respondents request that the appeal be dismissed
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. Before examining whether the appeal can be successful, i.e. whether the grounds for opposition submitted prevent the maintenance of the contested patent, it must be decided whether the opposition was admissible, since this was contested by the respondents.
2.1 Under Article 99(1), second sentence, EPC notice of opposition must be filed in a reasoned statement. This means that facts must be given - and in particular evidence cited - to demonstrate that the grounds for opposition submitted prevent the maintenance of the patent. If the opponent asserts lack of inventive step vis-à-vis the state of the art, subsequently published documents are not usually deemed to be suitable evidence since they do not belong to the state of the art and therefore cannot prove the grounds for opposition. In this respect the single, subsequently published document DE-C-2 523 588 cited within the opposition period does not itself qualify as evidence.
2.2 However, the heading on the first page of this document does contain a clear reference to the date on which the corresponding unexamined application was laid open to public inspection. This date precedes the priority date of the con- tested patent. It is therefore immediately apparent that the wrong document was cited as evidence and that instead ofthe subsequently published patent specification the corresponding unexamined application should have been cited. This is also clear from the fact that at the foot of page 2 of the notice of opposition reference is made to the "previously published document DE-PS 25 23 588", which was "discussed in the contested patent." On examination, however, it can be seen that column 1, line 9 of the contested patent mentions document DE-OS of the same number, i.e.the previously published unexamined application.
2.3 Despite the fact that the unexamined application was not printed in columns, it required little effort on the part of the patent proprietor and the European Patent Office to find the passages corresponding to those quoted from the two-column patent specification. Furthermore, the opposition is based primarily on example 6, which is identical in both documents 2.4 To summarise, grounds for opposition are deemed to be in due form if the single subsequent publication cited as evidence for the sole assertion of lack of inventive step contains a reference to a corresponding previous publication. Under these circumstances the opposition is adequately reasoned and therefore admissible ...
For these reasons, it is decided that:
The appeal is dismissed.