T 0369/91 (Detergent composition) 15-05-1992

1. The application for restoration meets all the relevant requirements of Article 122 EPC, and is therefore admissible.

2. The applicant's first request is that his notice of appeal of 20 May 1991, which by virtue of the prior filing by (3) of his notice of appeal ranks as a notice of cross-appeal, should be treated as a valid statement of grounds of appeal, fulfilling all the relevant requirements of Article 108 and of Rules 55(c) and 66(1) EPC. Although the notice does make brief reference to section 'V' of the decision of the Opposition Division, in which it was held that the main request lacked inventive step, as well as to section 'IX' of the said decision, these brief references do not, in the Board's judgment, fulfil the stringent requirements of Rules 55(c) and 66(1) EPC, namely, that a valid statement of grounds of appeal must set out in full not only the grounds on which the appeal is based, but also the facts, evidence and arguments relied upon by the appellant. The presence of the word "indication" in Rule 55(c) does not mean that a mere hint or allusion to such facts, evidence and arguments suffices: on the contrary, as was explained in decision T 326/87 "Polyamide compositions/DU PONT", OJ EPO 1992, 522, headnote I and point 2.1.1 of the reasons, Rule 55(c) requires at the least a clear indication to the patent proprietor of the case he has to answer. This requirement extends to appeals by virtue of Rule 66(1) EPC. Accordingly, the applicant's above-mentioned request is refused.

3. Turning to the applicant's second request for the restoration of his rights in respect of the date of filing the statement of grounds of appeal (ranking as a statement of ground of cross- appeal), it is evident that his professional representative did take prompt and effective action immediately after the removal of the cause of non-compliance on 29 July 1991, the date on which he first became aware of the relevant procedural omission. The Board also has considerable sympathy with the submission that the parallel operation of computerised and manual systems, where the former produced daily reminders whilst the latter only a single reminder, was inherently likely to confuse the attorneys who relied on the reminder system as a whole. Accordingly, the Board is prepared to accept, and so finds, that an isolated (and justifiable) mistake on the part of the attorney responsible for handling this appeal did take place.

As was submitted by the applicant, the switch from a manual to computerised system took place gradually throughout the 1980's. Although such changeovers are troublesome and time-consuming, it is to be expected that the reminder system as a whole will continue to ensure that reminders of all required procedural actions on behalf of all classes of clients are generated and passed on to the attorneys in good time. It follows that a composite reminder system cannot be deemed to be normally satisfactory, if it does not provide such timely reminders for all classes of clients, that is to say, for clients whose cases had been handled right from the application stage, as well as for those whose cases were taken on only after an opposition had been launched. The legal requirement of "all due care" provided for in Article 122(1) EPC is expressly contingent upon the circumstances in which that care has to be applied: cf. the reference to "circumstances" in the first complete sentence of the Article. The relevant circumstance in the present case is clearly the process of switching from a manual to a computerised reminder system, and 'due care' means ensuring that whilst both systems are being run in tandem the attorneys responsible for handling all classes of cases are made aware of which system, manual or computerised, has generated a particular reminder. Only in this way would they know precisely when, if at all, they could expect to receive a further reminder.

4. It follows that in the Board's judgment, there was not in operation, at the relevant time, a normally satisfactory reminder system in the context of which the isolated procedural mistake could be excusable on the basis of the jurisprudence of the Boards, as laid down in the cases cited above. Accordingly, the application for restoration of rights in respect of the time- limit for the filing of the statement of grounds of appeal is refused, with the consequence that the applicant's cross-appeal is held to be inadmissible (Art. 108 and Rule 65 EPC).

5. As has been stated in the Summary of Facts and Submissions, the applicant's letter of 20 May 1991 constitutes a cross-appeal by virtue of the prior filing by (3) of a valid notice of appeal. The other two opponents did not file notices of appeal and therefore, by virtue of Article 107 EPC (second sentence), they become parties as of right to the proceedings. For the same reason, the Board's above finding that the applicant's cross- appeal is inadmissible, makes him become a party as of right to the appeal proceedings.

6.1 In order to ensure the future speedy and streamlined conduct of those proceedings, the Board wishes to explain for all parties' benefit the legal consequences of a party being an automatic participant to appeal proceedings by virtue of Article 107 EPC, as distinct from one who is a volitional appellant or cross-appellant, or a respondent. That there is a clear difference between the rights of these two basic classes of parties has been made clear in a recently issued decision of the Enlarged Board in case G 2/91 (OJ EPO 1992, 206). The Enlarged Board in that case held that a party who was entitled to appeal but who did not do so, and relied merely on the second sentence of Article 107 EPC to secure his automatic participation in the appeal proceedings, did not have any independent right to continue those proceedings in the event that the appellant 'proper' withdrew his appeal. In the light of this inequality between the rights of "full" or "proper" appellants on the one hand, and Article 107 EPC participants on the other hand, the lodging of appeals by parties was held to be a meaningful act and not, therefore, one without substance. It followed that the second and subsequent appellants in the case before the Enlarged Board had no valid ground for asking for the repayment of their appeal fee in circumstances other than those stipulated by Rule 67 EPC (cf. paragraph 8 of the reasons).

In paragraph 6.1 of its reasons, the Enlarged Board analysed the meaning of Article 107 EPC (second sentence), holding that it did not confer upon a participant to appeal proceedings (who had not lodged an appeal) a legal position that was independent of the underlying existence of the appeal, but merely guaranteed that such a party could participate in the appeal proceedings. It followed that a party entitled to appeal but who did not do so and relied instead upon Article 107 EPC, second sentence, put himself at the risk of the appellant's discontinuing the appeal proceedings. This limitation upon the rights of such a party to continue the appeal proceedings was also expressly held to be independent of the question of the rights of the Boards of Appeal themselves to continue appeal proceedings from which the appellant had withdrawn (See G 7/91, OJ EPO 1993, 356 and G 8/91 (OJ EPO 1993, 346), (cf. Rule 60, paragraph 2, EPC).

6.2 It is therefore abundantly clear that the Enlarged Board decided that "parties as of right" to appeal proceedings do not enjoy the same rights as regards the continuation of the appeal as do "full" or "volitional" appellants. The Board notes that the Enlarged Board could have expressly stated (but did not), that this inability to continue appeal proceedings was the sole instance of the procedural inequality between the two relevant categories of appeal participants. The Board notes further, that not only did the Enlarged Board remain silent on this point but that it expressly recognised (without deciding on the point) the possibility that there may be a further instance of this procedural inequality, namely the right of a "participant as of right" to make unrestricted requests, that is to say requests of the self-same scope as those that a "volitional" participant was entitled to make (paragraph 6.2 of the reasons, first complete sentence).

6.3 If the rights of the above-mentioned two categories of participants to make requests were identical, then in the case that the Opposition Division had decided to maintain a patent in amended form, and the opponent had appealed asking for the revocation of the patent, it would be legitimate for the patentee, who either deliberately chose not to cross-appeal, or whose cross-appeal was held inadmissible, and who by virtue of either of these circumstances became a party as of right to the appeal proceedings, to challenge the decision by asking for the grant of the patent in unamended form.

6.4 Likewise, in the case that the Opposition Division had decided to maintain a patent in amended form, and the patentee had lodged an admissible appeal by asking for the grant of his patent in unamended form, whilst the opponent either chose not to cross-appeal or has had his cross-appeal held to be inadmissible, that opponent could, in the appeal proceedings, legitimately request the revocation of the patent in the same way that he would have been entitled to do had he chosen to and succeeded in, lodging an admissible cross-appeal, containing such a request.

6.5 If, however, such "automatic" participants' (whether they be patentees or opponents) rights to make requests were not identical to those of volitional participants, a possibility clearly recognised in paragraph 6.2 of the reasons of the Enlarged Board's decision, that is to say those rights were limited to the issues in an existing appeal, then a request by a patentee in the circumstances outlined in paragraph 6.3 above for the grant of his patent in unamended form would be inadmissible. The same would hold true, and for the self same reason, for a request made by an opponent for the revocation of the patent in the circumstances outlined in paragraph 6.4 above.

Such a limitation of rights to make requests depends as was stated previously on the assumption that an "automatic" participant's right to make requests was restricted to the issues in the appeal proceedings, and that it is these issues that lay down the particular limits ("gewisse Grenzen") referred to by the Enlarged Board in paragraph 6.2 of its reasons.

6.6 Since under the EPC appeal proceedings before the Boards of Appeal are judicial proceedings whose function it is to decide whether a decision by a first-instance department was, on its merits, correct (see T 52/88 unpublished; T 26/88, OJ EPO 1991, 30; T 611/90 and T 270/90, both to be published), the principal legal issue placed before a Board of Appeal is whether a first instance decision should be upheld or overturned. On the basis that an "automatic" party's right to make requests has to be restricted to any particular sub-issue that may legitimately arise within the bounds of the above-mentioned principal issue, and taking the case of the maintenance by a first instance department of the patent in amended form, an "automatic" patentee-participant will be restricted in his requests to the principal issue in the appeal, namely, whether the patent should be revoked as a consequence of the appeal being allowed (and the first instance's decision overturned), or whether the first instance's decision should be upheld, and consequently the appeal be dismissed and the patent be maintained as amended. Likewise, an opponent who was an "automatic" participant to an appeal brought by a patentee against such a first instance decision will be restricted in his requests to the direct consequences of the first instance's decision being either upheld or overturned: if overturned (patentee's appeal succeeds) the patent will be maintained as granted, whilst if it is upheld (a patentee's appeal is dismissed) the patent will be maintained in amended form.

6.7 Although for the reasons stated in paragraph 6.2 of the above-cited decision of the Enlarged Board, the question of the possibility (and by implication the extent) of any limitation on the rights of "automatic" participants to make requests was left open, this Board does expressly find that such participants' rights to make requests are indeed limited, and that the extent of these limits is set by the principal legal issue in the appeal, in the manner explained above.

6.8 In view of the Board's finding that the application for restoration is not allowable, and that, in consequence, the cross-appeal is inadmissible, the applicant's (patentee's) rights under Article 107 EPC to make requests will be limited to the issues in the appeal as validly lodged by opponent (3), that is to say, whether the patent should be revoked or granted in amended form.