Thursday, 1 October 2009

T 463/06 - A Board May Oblige the OD to Consider a Late-filed Ground It Had Not Admitted

[…] It was within the discretionary power of the opposition division (OD) to decide whether or not to admit A 83 into the opposition procedure. The OD did not admit insufficiency of disclosure as a late-filed ground for opposition because it considered that it was not prima facie relevant. The board has the power to examine the correctness of the conclusion not to admit said ground for opposition.

G 10/91 states in point 2 of the opinion: “In principle, the OD shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with A 99(1) in conjunction with R 55(c). Exceptionally, the OD may in application of A 114(1) consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent."

In the present case the opponent first raised the objection re lack of sufficiency of disclosure as a response to the patentee’s observations. This late-filing was justified as a direct response to the patentee’s observations and additional technical data [concerning] a contraceptive patch for which the arguments relating to the functions linked to a high and continuous drug flux through the skin played suddenly an essential role for the maintenance of the patent.

The OD considered at the oral proceedings (OPs) that the arguments of lack of sufficiency were not “prima facie” relevant for the proceedings. However, in view of the independent claims’ wording (i.e. owing to the presence of functional features in those claims), and in consideration of the arguments developed by the parties in writing during the opposition proceedings, it was essential to investigate whether the conditions set out in A 83 were met, before A 56 could properly be assessed. Therefore, the OD should have considered the discussion re sufficiency of disclosure to be “prima facie” relevant.

Since the review of the first-instance decision as to its merits is one of the main duties of the board, the discussion about A 83 forms part of the framework of the present appeal. Moreover, for the reasons expressed above, A 83 is not a fresh ground for opposition introduced for the first time in the appeal procedure. In fact, A 83 was in the opposition proceedings and was an essential part thereof. Moreover, the opponent did not withdraw its objections re A 83 at any time during the opposition written proceedings or at the OPs before the OD. Furthermore, in the appeal proceedings the respondent developed its arguments in full in its reply to the grounds of appeal. Correspondingly, there is a fundamentally different situation from that depicted in T 520/01, where the ground for opposition (insufficiency) was not maintained in the opposition OPs by the only party which had relied on the ground and the OD did not deal with the ground in its decision. As regards the appellant’s request for referral, the question addresses whether or not a board of appeal has the discretionary power to remit a case to the first instance for discussion of a late-filed ground of opposition. The board is convinced that it has the power to remit a case ex officio for further prosecution (A 111(1)) if it considers it appropriate for well-founded reasons. Apart from that, the board is not aware of any contradictory case law in this respect and hence does not consider that a referral is required in order to ensure uniform application of the law. [1.4]

This is similar to T 986/93 where the Board found that it was not barred from considering a belatedly submitted ground of opposition which had been disregarded by the OD pursuant to A 114(2) if the Board was of the opinion that the OD exercised its discretion in this respect wrongly. Here the Board goes even farther by remitting the case so as to oblige the OD to consider the ground.

To read the whole decision, click here.