T 0005/89 (Air-cleaning apparatus) 06-07-1990

1. The appeal is admissible.

2. The opposition proceedings:

2.1 The patent proprietors (appellants) raised objections in response to the communication under Rule 58(4) EPC informing them that the Opposition Division intended to maintain the patent in the form amended in accordance with their original first alternative request (see point IV). The Opposition Division thereupon issued a decision dated 18 September 1988 which, although sent out with obviously the wrong cover page ("Interlocutory decision within the meaning of Article 106(3) EPC"), was clearly a decision revoking the patent (cf. last paragraph of the decision). In it the Division confined its reasons to Claims 2 to 6, in other words effectively to the patent proprietors' main request, without commenting further on their alternative requests. It clearly interpreted the "objections" as meaning that the patent proprietors no longer approved of the text according to the alternative requests, which therefore had to be considered withdrawn. The Board cannot fault this interpretation since the "objections" signify disapproval (as opposed to conditional approval implicit in an alternative request), and specifically disapproval of the text communicated under Rule 58(4) EPC, i.e. basically that according to the first alternative request. The reason given in support of the "objections" - "because they consider the subject- matter of Claim 2 of granted patent No. EP-B-100 907 to be patentable as well" - suggests that only the main request was being maintained since it alone encompasses Claim 2 in addition to the claims according to the first alternative request. Under Article 113(2) EPC, an interlocutory decision maintaining a patent as amended cannot be based on a text that has not been agreed by the patent proprietor.

2.2 Practice in opposition proceedings has now changed as a result of Board of Appeal Decision T 234/86, published - in OJ EPO 1989, 79 - after the present opposition decision was taken, in that where both main and alternative requests have been submitted the main request may, and in certain circumstances ought to, be refused and an alternative request allowed in one and the same decision (in the case of amended documents: interlocutory decision under Article 106(3) EPC). The effect of this is that not every dissenting reaction by the patent proprietor to a communication from the Opposition Division based on an alternative request has to be treated as a withdrawal of the alternative request: it may also be conceived as an objection to the fact that the Opposition Division is unwilling to allow the main request.

Before issuing a negative decision solely to a patent proprietor's main request, the OppositionDivision must ensure that the proprietor has expressly withdrawn all subordinate requests. The Board feels that in the present case a decision such as this would have infringed the obligation under Rule 68(2) EPC to give reasons if, for example, the patent proprietors had expressly maintained their various requests, even if at the same time they had refused to agree to the proposed text, or if they had not responded to the Rule 58(4) communication, which the Enlarged Board of Appeal's case law permitted them to do without loss of rights (G 1/88, OJ EPO 1989, 189).

In the present case, however, the Opposition Division was able to interpret the patent proprietors' letter of 29 August 1988 as a withdrawal of the two alternative requests since, in the Board's opinion, an interpretation such as this accords with the usual and standard meaning of the expressions used. The contested decision does not therefore infringe Rule 68(2) EPC.

3. The appellants' main request ... For these reasons, the subject-matter of Claim 2 does not involve an inventive step (Article 56 EPC) and is not therefore a patentable invention within the meaning of Article 52 EPC.

3.3 The main request cannot be allowed since it also includes independent Claim 2. The second alternative request relates to a set of claims comprising only Claim 1 and Claims 3 to 6.

4. First alternative request ... It follows that the subject-matter of Claim 2 according to the appellants' first alternative request is not patentable (Article 52 in conjunction with Article 56 EPC) so that this request cannot be allowed either.

5. The appellants' second alternative request ... 5.4 The subject-matter of Claim 1 according to the appellants' second alternative request is therefore patentable (Article 52 EPC), as is also that of the other Claims 2 to 5 because they relate back to Claim 1. Since, for the foregoing reasons, the patent in the text according to the appellants' second alternative request and the invention to which it relates meet the requirements of the Convention, this request is to be allowed (Article 102(3) EPC).

5.5 The text of the patent according to the appellants' second alternative request corresponds to that forming the basis for the communication under Rule 58(4) EPC dated 28 July 1988. Clearly, therefore, the Opposition Division had no objections to this text although its reasons are not apparent from the documents available.

Since the Opposition Division did not indicate in its decision why it intended to maintain the patent in the text before the Board forming the basis for the appellants' second alternative request, the respondents ask to have the matter remitted to the Opposition Division, failing which they ask to have the question of whether the Board of Appeal can itself decide on the request in such a case or whether the matter has to be remitted to the Opposition Division referred to the Enlarged Board of Appeal. However, in the Board's view, it is clear from Article 111(1) EPC that the decision as to whether the Board of Appeal may exercise any power within the competence of the department responsible for the decision appealed, or whether it remits the case to that department for further prosecution, lies within the Board's discretion, provided the parties have had ample opportunity to present their comments.

Although, in the present case, the Opposition Division did not say why it intended to maintain the patent as amended, it is clear from the minutes of the oral proceedings held on 5 July 1988 that the respondents had already had an opportunity before the Opposition Division to state their objections to the allowability of Claim 1 in that text and that they had moreover availed themselves of this possibility, albeit unsuccessfully (page 2, point 2 of the minutes). The respondents were therefore given ample opportunity during the opposition proceedings to present their comments on the subject of the appellants' second alternative request before the Board (Article 113(1) EPC). In the course of the appeal proceedings no new facts, evidence or arguments were submitted which might have caused the Opposition Division to diverge from its already announced, but unsubstantiated, views concerning the allowability of the alternative request in question. The Board does not, therefore, consider it appropriate to remit the matter to the Opposition Division for an examination as to whether the appellants' second alternative request can be allowed. Rejecting the respondents' request to have the matter remitted to the Opposition Division falls short of what the Boards of Appeal normally do in cases where claims are amended or limited in certain respects for the first time during appeal proceedings, and that is to decide on these requests themselves even though they had not been put to the department of first instance. Still less can it be argued that it is absolutely essential to remit for a decision a request made at an earlier stage of the proceedings on which the department of first instance has already stated its position.

Since, in the Board's view, the refusal to remit the present matter to the Opposition Division neither constitutes an important point of law nor jeopardises the uniform application of the law by the Boards of Appeal, the matter does not need to be referred to the Enlarged Board of Appeal (Article 112(1)(a) EPC).