T 0293/88 (Light transmitting wall panels) 23-03-1990
Examination of claims not objected to by the Opponent
Power and obligation of the Opposition Division
Reimbursement of appeal fees (yes)
I. European patent No. 50 462 was granted on 9 January 1985 with one independent and nine dependent claims in response to European application No. 81 304 745.3, filed on 12 October 1981.
II. A Notice of Opposition was filed against the European patent on 7 October 1985. The revocation of the patent was requested on the grounds of lack of inventive step. ...
III. In its decision of 26 April 1988 the Opposition Division revoked the patent because of lack of inventive step. ...
VII. The Appellant requests the maintenance of the patent on the basis of amended Claims 1 to 9 ... The Appellant also requests that in view of the procedural violation the fee be reimbursed.
5. Reimbursement of appeal fee
5.1 In its Counterstatement the Proprietor of the patent submitted in the opposition proceedings an auxiliary set of claims ("A"), with minor modifications in order to comply with Rule 29(1) EPC, and later on a second set ("B") without further modifications to the main claims. Thus, in effect, the proprietor defended the subject-matter of Claim 1 without introducing amendments at that level. No request for an oral proceeding was submitted by either of the parties, and the Opposition Division was therefore entitled to come to a conclusion on that particular point on the basis of the submissions and the text agreed by the proprietor.
However, in his Counterstatement the Proprietor made it clear that he requested maintenance "with the claims as published or with possible amended claims to be determined in the course of the opposition proceedings."
The decision of the Opposition Division to revoke the patent without issuing any communication in advance disregards the fact that validity at another level was not challenged at all, and a further opportunity to fall back at least to such position was reasonably to be expected in such circumstances. 5.2 During the opposition procedure the Respondent (Opponent) only challenged the validity of Claims 1 to 6 and 8. Thus, the validity of dependent Claims 7, 9 and 10 was not an issue raised in the proceedings. The features of these claims contain additional features which were not disclosed in any documents and were thereby representing subject-matter not necessarily standing or falling together with other features of broader claims under discussion.
It is the view of the Board in this respect that the Opposition Division should assume the prima facie validity of dependent claims which have not been objected to by the Opponent at any stage. The Opposition Division has no reason to doubt the validity of the examination of undisputed claims before grant unless specific circumstances have emerged in consequence of evident technical facts not to be neglected or submissions in the proceedings (cf. also Guidelines D-V, 2). It may also investigate the validity of such claims which are in the same category as those attacked in the opposition proceedings, within its own discretion under Article 114(1) EPC, provided their validity is necessarily and directly prejudiced.
5.3 The situation in the present case is distinguished from that in the decision of case T 9/87, OJ EPO 1989, 438, where the Board doubts the obligation and even the power of the Opposition Division to investigate further matters. That case related in fact to unattacked claims of a different category, involving inventions of a different kind, and not, as in the present case, to claims which relate only to dependent narrower aspects of the same subject-matter.
5.4 However, the onus of raising such closely related additional matter with the parties is on the Opposition Division under Article 113(1) EPC. It failed to point out, in a Communication to the parties, its position with regard to Claims 7, 9 and 10, which were not challenged. Since the patent might have been maintained in an amended form on the basis of such claims at that stage in the absence of specific objections on the part of the Examining Division, the failure to inform all concerned was a substantial procedural violation and a reimbursement of the appeal fee is justified. ...
For these reasons it is decided that: ...
3. Reimbursement of the appeal fee is ordered.