T 0198/88 (Concrete restoration) 03-08-1989
1. Opposition is an independent procedure which takes place after the grant procedure. A document considered in the examination procedure, therefore, is not automatically scrutinised in opposition or opposition appeal proceedings, even if quoted and acknowledged in the contested European patent.
2. If the document is not introduced into the opposition proceedings in due time, its relevance is examined by the Office in the course of the enquiries it conducts of its own motion (Article 114(1) EPC).
Document mentioned in the European patent specification not automatically to be taken into account in opposition proceedings
Referral to the Enlarged Board of Appeal (refused)
I. European patent No. 108 828 comprising two claims was granted in respect of European patent application No. 82 110 545.9 filed on 16 November 1982. Mention of the grant was published in Patent Bulletin 86/33 on 13 August 1986. Independent Claim 1 as granted reads as follows: .....
II. Two notices of opposition to the grant of this patent were filed on 31 March and 12 May 1987. Citing several documents including: (6) DE-A-2 412 475 and (7) Korrosions-Schutz durch Lacke und Pigmente (Corrosion protection with paints and pigments), J. Ruf (1972), pages 132- 161, the opponents requested that the patent be revoked for lack of novelty and inventive step.
III. The Opposition Division rejected the oppositions in a decision dated 8 March 1988. ...
IV. The appellants lodged an appeal against this decision on 6 May 1988, paying the prescribed fee at the same time. On 5 July 1988 they filed reasons in which it was submitted that, in the light of (6) inter alia, the subject-matter of the contested patent did not involve an inventive step. ... In oral proceedings held on 3 August 1989 the appellants also cited (11) DE-A-2 458 149, a document acknowledged in the contested patent as representing the state of the art, but not previously mentioned at any stage in the opposition or appeal proceedings. ...
VI. The appellants request that the disputed decision be set aside and the patent revoked in its entirety. They request in the alternative that if the Board regards document (11) - cited - as evidence not submitted in time, the following point of law be put to the Enlarged Board of Appeal: "Does a document cited and acknowledged in the contested patent form part of opposition (appeal) proceedings even if it has not been mentioned within the period for opposition?" The respondents request that the appeal be dismissed. ...
2. The Board takes the following view concerning document (11) as cited in the oral proceedings and the relevant alternative request that the matter be referred to the Enlarged Board of Appeal.
2.1 Opposition is an independent procedure following the grant procedure. It is a separate procedure in which a patent wrongly granted may be limited or revoked. This not only requires a statement of the grounds for opposition; the supporting facts, evidence and arguments must also be presented within the period for opposition (Articles 99(1) and 100, and Rule 55(c) EPC). Consequently, the opposition procedure is not part of the grant procedure. A document cannot therefore in any circumstances be held to form part of the opposition or appeal proceedings if it is merely cited and acknowledged in the contested patent. Document (11) thus did not form part of the opposition proceedings.
2.2 The examination of the facts carried out by the Office of its own motion in accordance with Article 114(1) EPC revealed that document (11) would not have led to any other decision concerning the patentability of the contested patent's subject-matter. That document is consequently irrelevant and can be left out of account for the rest of these proceedings. This conclusion requires no further substantiation. The decision- making body does not have to consider information or objections which are presented late and are in any case irrelevant to the decision.
2.3 The Board believes that the answer to the point of law raised in the request for referral to the Enlarged Board of Appeal (Article 112(1) EPC) can be deduced directly and unequivocally (as explained under 2.1 above) from the provisions of the EPC. Nor does it know of any contrary decisions which would justify a ruling by the Enlarged Board of Appeal with a view to ensuring uniform application of the law (Article 112(1) EPC). Accordingly, no such ruling is needed (Article 112(1)(a) EPC) and the request is therefore rejected. ...
For these reasons it is decided that: The appeal is dismissed.