BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.2.1 dated 11 January 1993 - T 789/89 - 3.2.1*
Composition of the Board:
Patent proprietor/Appellant: McALPINE & COMPANY LIMITED
Opponent/Respondent: AB Sjöbo Bruk
Headword: Relief valve/McALPINE
Keyword: "Inventive step (yes)" - "Parties to appeal - withdrawal of opposition - substantive issues/non-substantive issues, e.g. costs"
The respondent to an appeal and former opponent who withdraws his opposition ceases to be a party to appeal proceedings as far as the substantive issues (re: existence and scope of the patent right) are concerned. However this leaves his party status unaffected insofar as the question of apportionment of costs under Article 104 EPC is at issue (see point 2).
Summary of Facts and Submissions
I. European patent No. 0 059 558 was granted on 29 July 1987 on the basis of European patent application No. 82 300 821.4, filed on 17 February 1982.
III. The Opposition Division revoked the patent by decision of 9 October 1989 for lack of novelty in view of document D1.
IV. The appellant lodged an appeal against this decision on 6 December 1989 and paid the appeal fee in due time. The statement of grounds of appeal was received on 7 February 1990.
VII. By letter dated 17 January 1992 (received on 21 January 1992), the former respondent declared that he had decided to discontinue the opposition.
Reasons for the Decision
2. Discontinuance of opposition
2.1 The respondent's declaration made in the course of the appeal proceedings that he has decided to "discontinue the opposition" clearly indicates that he wants to cease his opposition. Thus this declaration is to be interpreted in the sense that the opposition has been withdrawn.
2.2 Such a declaration has no immediate procedural significance (see: T 629/90, point 2.2., OJ EPO 1992, 654) in the sense that contrary to the situation where an appeal is withdrawn (see G 7/91 of 5 November 1992), appeal proceedings remain pending. In contrast to proceedings where the matter in dispute is at the sole disposal of the parties, it follows from the nature of patent proceedings under the EPC that the organs of the EPO have to take into account the public interest (see G 7/91, points 7 to 10). The declaration in question was made after the decision by the Opposition Division was pronounced and after the appeal was validly filed. The appeal has suspensive effect (Art. 106(1) EPC). This means that, although the contested decision is binding on the Opposition Division, it is not yet otherwise in legal force. The opposition proceedings as such came to an end with the final decision taken by the Opposition Division (see G 4/91 of 3 November 1992).
Hence the declaration in question cannot have any retroactive effect on the opposition proceedings concluded by the (here contested) final decision of the Opposition Division.
2.3 However, the question arises as to what extent such a declaration affects the party's status in the pending proceedings before the Board of Appeal.
The declaration of discontinuance of opposition is to be understood as withdrawal of all requests and counter-requests pending and the withdrawal from appeal proceedings. Thus it is clear that the respondent intends to end his status as a party to the proceedings as far as the substantive issues concerning the existence and the scope of a patent right are concerned.
According to Article 107 EPC, second sentence, any party to the opposition proceedings shall be a party to the appeal proceedings as of right. Does this mean that a respondent and former opponent is not allowed to cease being a party to appeal proceedings?
In order to ascertain the meaning of Article 107, second sentence, the Board applies the rules of interpretation according to Articles 31 and 32 of the Vienna Convention on the Law of Treaties, concluded on 23 May 1969 (see OJ EPO 1984, 192), as set out in G 5/83, points 1 to 6 (OJ EPO 1985, 64). Under Article 31 of the Vienna Convention a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to terms of the treaty in their context and in the light of its object and purpose (Art. 31(1) Vienna Convention).
The ordinary meaning of Article 107 does not provide an answer. The sentence in question states who becomes a party to the appeal proceedings. It does not contain a statement concerning the discontinuance or ceasing of being a party to these proceedings. In particular it does not say that ceasing to be a party is excluded.
The context is formed here by the provisions of the EPC and by related rules and treaties. Nothing concerning discontinuance of opposition can be found there. Only Rule 60(2) contains a statement concerning discontinuance (withdrawal) of opposition. But it refers to the proceedings before the Opposition Division and according to the decision of the Enlarged Board of Appeal in G 7/91 of 5 November 1992 does not apply to appeal proceedings (see also point 2.2 above).
Article 125 EPC reads: In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States.
It is a principle of procedural law often recognised in the Contracting States that a party, which is free to start or to enter proceedings, may also declare discontinuance of proceedings and thus cease to be a party to further proceedings, sometimes subject to approval of the other parties and leave of the Court. And it is a generally recognised principle of procedural law of the Contracting States that main or substantive issues may be dealt with separately from subsidiary or non-substantive issues such as e.g. cost questions.
Object and purpose: The question whether a party is free to cease being a party relates to the status of parties in inter partes appeal proceedings following an opposition against the grant of a patent. In particular it concerns here the status of the opponent and later respondent. It thus concerns the party who is not the proprietor of a European patent but the one who considers himself to be affected by a patent. Such a party is as free as anybody else (Art. 99(1) EPC) to file an opposition or not. Once he has filed an opposition the case is dealt with not only in the party's interests but also in the public interest (see point 2.2. above).
In order to see whether this allows a positive conclusion recourse may also be had to supplementary means of interpretation such as preparatory work if the meaning of a provision remains unclear (ambiguous or obscure) after the application of Article 31 of the Vienna Convention (Art. 32 Vienna Convention). The Preparatory Documents of the Munich Diplomatic Conference 1973, M/54, page 114, contained a draft version of Article 106 which read: "Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right, with the exception of those who have abandoned that right" (emphasis added).
This article forms the basis of today's Article 107 EPC but the last part of the second sentence - "with the exception of those who have abandoned that right" - was dropped. The reason given for proposing this amendment was the following:
"It was considered that parties to proceedings resulting in a decision against which an appeal is filed continue to be parties to the appeal proceedings "ipso iure" and that this principle must be retained to avoid difficulties particularly where the appeals body amends the decision of the lower instance and such amendment also relates to the division of costs between parties.
"The words which it is proposed to delete could be interpreted as a departure from this principle. This was not the intention; the intention was to make it clear that although the parties to the proceedings before the lower instance are recognised as parties to the appeal proceedings, this does not mean that persons not wishing to take an active part in the latter proceedings will be forced to do so: this is however clear without any express provision being necessary." (See Comments on the preparatory documents of the Munich Diplomatic Conference 1973, M/14, page 92).
In addition to the question of costs the view was also expressed that an opponent should not be allowed to withdraw from participation in the appeal proceedings following the revocation of a patent because the decision of the first instance was not final for him either and could be changed by the Boards of Appeal. Such a party could take the view that the final decision of the Boards of Appeal had no effect on him because he had withdrawn from the proceedings. (See Comments on the Munich Diplomatic Conference 1973, M/PR/I, pages 52/53, Nos. 434, 443).
The latter view however cannot be followed by the Board because the legal nature of a patent is such that it grants an "absolute" or "real" right ("in rem"), having effect on any person of the public ("erga omnes"), for which reason the right conferred by a patent is sometimes referred to as "intellectual property". Moreover the final decision of the Board of Appeal of the EPO which maintains or revokes a patent on appeal is not taken in the parties' interests alone but includes also the taking into account of the public interest (see point 2.2 above). It therefore has effect on any person notwithstanding whether they participated in opposition or appeal proceedings or not (see Article 64 EPC).
It follows from the above that no party was intended to be forced to participate actively in appeal proceedings and that the abandonment of the right to be a party was originally provided for. The only reason for dropping the half-sentence referring to abandonment was to provide a legal basis for the possible liability of such a party for costs. Thus it cannot have been the intention of the Contracting States to forbid an abandonment of the said right as such. Otherwise and if they had wished to underline the party status as an obligation, they would have had reason to clearly say so.
2.4 Under the EPC each party to the proceedings shall on principle meet all the costs he has incurred (see Singer R., Europäisches Patentübereinkommen, Article 104, point 2, page 419).
According to Article 104(1) EPC this principle may be departed from in opposition and appeal proceedings. Thus it must have been these costs which were meant in the above cited preparatory work concerning Article 107 EPC.
Article 104(1) EPC reads: "Each party to the proceedings shall meet the costs he has incurred unless a decision of an Opposition Division or a Board of Appeal, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs incurred during taking of evidence or in oral proceedings."
Thus Article 104(1) EPC and not Article 107 EPC provides the legal basis for the liability concerning costs. It follows from Article 104(1) EPC that any party remains a party to the proceedings as long as he can come into consideration for a liability with regard to costs incurred during the proceedings and as long as these have not been finally decided upon.
Under Article 104(1), (2) and (3) EPC distinct rules are provided regarding apportionment and fixing of the amount of costs and regarding the enforcement of this decision in the Contracting States. Rule 63 EPC also deals with the cost issue and states that apportionment of costs shall be dealt with in the decision on the opposition. This applies also to the decision on the appeal (Rule 66(1) and (2)(h) EPC). Article 106(5) EPC and Article 11 of the Rules relating to Fees provide for an appeal against a decision fixing the amount of costs. Further provisions concerning costs are stated in Article 106(4) EPC and Rule 74 EPC. That makes it clear that apportionment of costs is a specific and distinct issue in opposition and appeal proceedings under the EPC (see also T 154/90, OJ EPO 1993, 505; T 117/86, OJ EPO 1989, 401; T 85/84). It is therefore not necessary to force a party to remain a party to the proceedings if costs are not at issue.
2.5 This conclusion is supported by two more general considerations:
The only aspects which could lead to a restriction of a party's rights in the present procedure are the interests of the other parties and the public (see point 2.2 above). If, as in the present case, the other party (the proprietor of the patent) or parties were duly informed about the respondent's discontinuance declaration and did not object, the Board can see no reason why the defence of the public interest should necessitate forbidding the respondent (opponent) to cease being a party to the proceedings as far as the substantive issues are concerned because the respondent could not be obliged to further participation with this regard even if the Board would find that necessary later on.
Moreover, taking into account the fact that an appellant is allowed to bring proceedings to an end by withdrawing his appeal and this not only on his behalf but also on behalf of all other parties involved (see G 7/91), it would be unjustified to restrict the respondent's rights more than the rights of the appellant by forbidding the respondent to cease his participation in proceedings and with respect to the substantive issues.
2.6 In the light of the above a respondent who discontinues his opposition ceases to be a party to appeal proceedings as far as the substantive issues are concerned. On the other hand his party status remains unaffected by his declaration insofar as the question of apportionment of costs under Article 104 EPC is at issue. As found in point 2.3 (last paragraph) above, that corresponds to the purpose of Article 107, second sentence, EPC (see also: Schulte R., Patentgesetz, 4th edition, Section 73, 29, point 1.5, paragraph 3).
2.7 In the present case the question of an apportionment of costs has not arisen. The respondent has therefore ceased to be a party to the proceedings and shall therefore no longer be mentioned as a party.
However, had such a question of apportionment of costs arisen here, the former respondent would have had the right to be heard on this issue and he would have had to be named as a party in the final decision.
2.8 The Opposition Division in their contested decision revoked the patent. The legal interest of the appellant (the proprietor of the patent) in a reversal of that decision remains intact, notwithstanding the declaration mentioned above. Hence, the Board has to evaluate the merits of the case and to issue a decision. In doing so the Board applies the law of the Convention of its own motion taking into account all the facts on file (T 629/90, point 2.2, OJ EPO 1992, 654).
3. Allowability of the amended documents
4. State of the art and delimitation of Claim 1 (Rule 29(1)(a) EPC), novelty
5. Inventive step
For these reasons it is decided that:
1. The contested decision is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the following documents:
* This is an abridged version of the decision. A copy of the full text in the language of proceedings may be obtained from the EPO Information Desk in Munich on payment of a photocopying fee of DEM 1.30 per page.