Wednesday, 15 September 2010

T 1052/07 – Hidden Depths

Decision T 131/01 is well known for having established that “in a case where a patent has been opposed under A 100(a) on the grounds of lack of novelty having regard to a prior art document and lack of inventive step having regard to the same prior art and the ground of lack of novelty has been substantiated pursuant to R 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee.”

In the present case claim 1 was not opposed for inventive step but for novelty only. Later in the proceedings, the opponent made an inventive step objection against claim 1. The Opposition Division (OD) considered the case comparable to T 131/01. The patent proprietor objected that T 131/01 was not applicable situation, since in the case dealt with in T 131/01, an inventive step attack was submitted as a precaution in the notice of opposition itself.

[1.1] The proprietor has disputed the finding of the OD that lack of inventive step had also been raised as a ground of opposition against claim 1. The only argument in this respect presented by the proprietor in the appeal proceedings is that the present situation is different from that considered in T 131/01, to which the Department of first instance referred in the decision under appeal. Indeed, in the present case no mention of lack of inventive step was contained in the notice of opposition.

[1.2] The Board considers the proprietor’s argument insufficient already because there are other aspects in the notice of opposition and in the statement of grounds of opposition of the present case, that appear unambiguously indicative of an implicit objection of lack of inventive step against claim 1 as granted.

Indeed, in the present case […], the box in the standard EPO form indicating that the patent-in-suit lacks of an inventive step is crossed, and the objection under A 56 explicitly raised and substantiated in the statement of grounds in respect of claims 2 and 3 dependent on claim 1, necessarily imply the same objection of lack of inventive step at least against those portions of the subject-matter of claim 1 corresponding to claims 2 and 3. Hence, the Board sees no reason to depart from the finding of the OD on this point.

I wondered what was meant by “statement of grounds of opposition” as opposed to the notice of opposition. It turns out that the Board distinguishes between the EPO form 2300 (which corresponds to the “notice of opposition”) and its annexes (the “statement of grounds of opposition”). The expression is rare: only 39 decisions on the DG3 site contain it.

If you wish to download the whole decision, please click here.