T 0289/91 (ACE inhibitors) 10-03-1993
1. The admissibility of the opposition is an indispensable procedural requirement for the substantive examination of the opposition submissions at every stage of the proceedings, i.e. also in appeal proceedings, and, as such, it must be examined by the EPO of its own motion (point 2.1 of the Reasons).
2. A statutory declaration that the opponent is acting on his own behalf may only be required if there are concrete grounds for casting serious doubt on the opponent's true identity. Serious doubts as to the opponent's true identity are not justified by the mere fact that the opponent does not have any obvious personal or economic interest in the subject-matter of the patent (following T 635/88, OJ EPO 1993, 608, point 2.2 of the Reasons).
Admissibility of opposition contested for first time during appeal proceedings
Entitlement to file opposition (yes)
Application for investigation to determine true identity of opponent rejected
Novelty (yes, selection)
Inventive step (yes)
Establishing closest prior art
I. By a decision delivered on 26 November 1989, with written reasons issued on 7 February 1991, the Opposition Division of the European Patent Office rejected an opposition against European patent No. 0 079 022. An appeal was filed against that decision on 5 April 1991 and the prescribed fee was paid at the same time.
V. ... In a communication received on 31 October 1992, citing decisions T 635/88 (OJ EPO 1993, 608) and T 10/82 (OJ EPO 1983, 407), the respondents for the first time expressed doubts about whether the opponent and present appellant was acting on his own behalf and was thus entitled to file notice of opposition. As grounds for their doubts, they mentioned the opponent's advanced age and the fact that his fields of work, as could be seen from a list of his publications, were unrelated to the subject-matter of the patent in suit; they also referred to an extract from the Commercial Register submitted in the oral proceedings. In those proceedings they claimed that they had already had such doubts at the beginning of the opposition proceedings, but that it was only after decision T 635/88 became known that they had seen a possibility of having their doubts removed by means of a statutory declaration on the part of the opponent.
VI. The appellant, who, as foreseen, was not present at the oral proceedings, requested that the decision under appeal be set aside and the patent revoked.
The respondents requested that the decision under appeal be set aside and that the opposition be rejected as inadmissible (main request) ...
The Board's decision to dismiss the appeal was delivered at the end of the oral proceedings.
1. The appeal is admissible.
2. Main request
2.1 The essential circumstances put forward by the respondents in support of their objection - raised for the first time on 31 October 1992 - that the opposition was inadmissible, were already known to the respondents during the opposition proceedings, as they themselves stated; nevertheless, they did not immediately raise the objection of inadmissibility or appeal against the Opposition Division's decision in which it ruled that the opposition was admissible. Such conduct cannot meet with approval. Nevertheless, in the Board's judgment, an objection that the opposition is inadmissible, e.g. as in the case at issue, because the opponent is not entitled to file an opposition, can be raised at any stage of the proceedings, i.e. even at a late stage, because the admissibility of the opposition is an indispensable procedural requirement for any substantive examination of the opposition submissions, and it must therefore be examined by the EPO of its own motion. This also applies to the proceedings before the Board of Appeal.
2.2 It is the Board's belief that the objection raised by the respondents that the appellant is not acting on his own behalf is based only on surmise and does not justify the Board's taking evidence in order to establish the present appellant's alleged principal. The Board considers such an "application for an investigation" to be inadmissible.
2.2.1 For this reason, the Board had already indicated in its communication dated 19 November 1992 pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal that it did not consider it necessary to take evidence, as requested, by cross-examining the appellant in order to establish the "true identity of the opponent". A cross-examination of this kind and the demand that a statutory declaration be submitted, as likewise suggested by the respondents, would only have been appropriate if the respondents could have put forward concrete grounds for suspecting that the opponent was acting on behalf of a specific third party. That was the situation in case T 635/88. There, a third party had claimed in infringement proceedings before a national court that he (and not the opponent which had acted before the EPO allegedly on its own behalf) had been responsible for the opposition before the EPO against the patent he was accused of infringing. In case T 10/82, the opponent (a professional representative) had himself later admitted filing the opposition on behalf of a third party, so that the fact was undisputed.
2.2.2 In contrast to the situations described above, the respondents in the case at issue have only submitted that, in view of the appellant's age, fields of work and financial circumstances, he was unlikely to have filed an opposition on his own behalf and at his own expense. All that becomes apparent from the extract from the Commercial Register submitted in the oral proceedings is that the appellant's wife is managing director of a company operating in the pharmaceuticals field. Not even the respondents themselves, however, tried to infer from that that the opposition had been filed on behalf of that company. They merely submitted that they suspected the "true opponent" was concealed behind that company.
2.2.3 Since Article 99(1) EPC specifically lays down that "any person" may, within a specified period and observing certain formal requirements, give notice of opposition to a European patent granted, the Board must as a matter of principle assume that any person giving notice to the EPO of opposition against a European patent in his own name is indeed acting in his own name. The EPC does not provide for any demand that this should as a matter of principle be confirmed by a declaration under oath where there is no obvious economic interest in the subject-matter of the patent in suit.
2.2.4 The Board therefore believes that an opponent can only be required to make such a declaration if, as in case T 635/88, the Board is notified of concrete grounds for harbouring serious doubts as to the opponent's true identity, because only under these circumstances can the Board request the opponent to assist in removing the existing doubts.
2.3 The opposition is therefore admissible. Consequently, the main request must be refused.
For these reasons it is decided that:
1. The main request is refused.