|European Case Law Identifier:||ECLI:EP:BA:1988:T000987.19880818|
|Date of decision:||18 August 1988|
|Case number:||T 0009/87|
|IPC class:||C01B 33/28|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||The examination of an opposition under Article 101 EPC is limited by the statement in the Notice of Opposition of the extent to which the patent is opposed. Article 114(1) EPC should be interpreted as subject to Article 101 EPC in this respect. Neither the Opposition Division nor a Board of Appeal has the obligation or the power to examine and decide on the maintenance of the European patent except to the extent to which it is opposed (cf. point 3 of the Reasons).|
|Relevant legal provisions:||
|Keywords:||Extent of opposition limited to specific claims
Deletion of the opposed claims
Limited examination power of Opposition Division and Board of Appeal
Summary of Facts and Submissions
I. The mention of the grant of patent No. 0 059 059 in respect of European patent application No. 82 300 770.3, filed on 16 February 1982 and claiming priority of 23 February 1981 from a prior application in the United Kingdom, was announced on 14 November 1984 (cf. Bulletin 84/46) on the basis of eleven claims. ...
II. On 2 August 1985 the Appellant filed a notice of opposition on the ground that the subject-matter of the patent was not patentable within the terms of Articles 52 to 57 EPC. The opposition was only brought against Claims 1, 2 and 11 of the patent. ...
III. By a decision dated 31 October 1986 the Opposition Division rejected the opposition on the basis that the subject- matter of the independent Claims 1, 3 and 11 was novel and involved an inventive step.
IV. An appeal was lodged by the Appellant by a duly confirmed telex on 24 December 1986 with payment of the prescribed fee. In the statement of grounds of appeal filed on 2 March 1987 the Appellant reiterated that only Claims 1, 2 and 11 were opposed since the subject-matter of these claims lacked novelty and inventive step in the light of the disclosure in documents (1) and (2). Claims 3 to 10 had deliberately not been opposed. ...
V. In a communication of the Board dated 4 May 1988, the preliminary opinion was expressed that the subject-matter of Claims 1, 2 and 11 of the disputed patent lacked novelty. In his reply filed on 8 July 1988 the Respondent filed an amended set of claims in which the opposed claims had been deleted.
VI. The Appellant requested that the decision under appeal be set aside and that the patent be revoked if any one of Claims 1, 2 and 11 are maintained. The Respondent requested that the patent be maintained in amended form on the basis of Claims 1 to 8 filed on 8 July 1988.
Reasons for the Decision
1. The appeal complies with the requirements of Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. There are no formal objections under Article 123 EPC to the present set of claims. Present Claims 1 to 8 correspond to Claims 3 to 10 as originally filed and granted.
3. By the deletion of original Claims 1, 2 and 11 the only issue which was raised in the opposition has been overcome. Article 99(1) EPC provides inter alia that "notice of opposition shall be filed in a written reasoned statement". Rule 55(c) EPC requires that the notice of opposition shall contain "a statement of the extent to which the European patent is opposed" (and of the grounds on which the opposition is based). Opposition proceedings constitute an exception to the general rule under the EPC that a European patent after grant is no longer within the competence of the EPO but becomes a bundle of national patents within the jurisdiction of the designated Contracting States. Opposition proceedings are an exceptional procedure whereby, during a limited period of time, a centralised action for revocation of a European patent may be brought before and decided by the EPO. With this background in mind, in the Board's view, an opponent's statement pursuant to Rule 55(c) EPC of "the extent to which the European patent is opposed", in combination with the grounds of opposition, provides a definition of the issues raised by the opposition and, therefore, of the extent of competence of the EPO in relation to the examination of the opposed European patent under Article 101 EPC. Article 114(1) EPC should be interpreted as subject to Article 101 EPC in this respect. Applying this principle to the present case, the notice of opposition clearly defined the extent of the opposition as limited to the subject-matter of Claims 1, 2 and 11. The power of the Opposition Division and the Board of Appeal was thereby limited to a consideration of these three claims. Neither the Opposition Division nor the Board of Appeal, therefore, has either the obligation or the power to examine and decide whether the maintenance of the patent is prejudiced after it has been amended to exclude Claims 1, 2 and 11. It follows that the patent must be maintained with Claims 1 to 8 as requested by the Respondent (subject to any appropriate amendment of the description). The subject- matter of these claims was not the subject of the opposition proceedings.
For these reasons, it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent in amended form on the basis of Claims 1 to 8 as filed on 8 July 1988 and a description in a form to be decided by the first instance.