Friday, 29 October 2010

T 1478/07 – No Need To Hear

I owe the knowledge of this decision, which has not been published on the DG3 site yet, to a kind colleague. Among other things, the decision deals with the question what an Opposition Division (OD) has (or rather does not have) to do when introducing a new ground of opposition.

[5.1] The patent in suit was opposed only on the basis of A 100(a) for lack of novelty and lack of inventive step. The opposition division introduced the ground of opposition based on A 100(c) during oral proceedings (OPs).

[5.2] [The patent proprietor] disputed that this new ground of opposition had been properly introduced into the opposition proceedings, given that it had not been given the opportunity to argue as to whether this new ground of opposition was prima facie relevant. Decisions G 9/91, G 10/91 and T 433/93 were cited in that respect. Failure to respect the right to be heard regarding that issue constituting a procedural violation (A 113(1)) which justified the refund of the appeal fee as well as the remittal of the case to the department of first instance.

[5.3] In view of the content of the minutes of the OPs before the OD and the submissions of [the patent proprietor], it appears that the legal framework of the admissibility of a new ground of opposition was discussed […]. After adjournment of the OPs, this new ground was admitted by the OD […].

[5.4] It cannot be inferred either from the content of decision G 9/91 (or G 10/91) or from decision T 433/93 […] that in order to meet the requirements of A 113(1), the OD must, before discussing the substantive reasons for the objection, give the parties the opportunity to express their views as to the prima facie relevance of the introduction of a new ground of opposition (A 114(1)). In that respect no procedural violation occurred.

[5.5] The board may, however, assess whether the OD exercised its discretion to admit this new ground of opposition in an unreasonable way.

In the board’s judgment, when an objection under A 100(c) is raised during OPs, one of the requirements justifying the introduction of this ground is that the contested amendment has no explicit basis in the application as originally filed.

That is actually the case here since on the one hand the feature that the MFR12 value of the first ethylene polymer is from 50g/l0min to 2000g/l0min is only explicitly disclosed in the application as filed in connection with the additional features that i) an amount of chain transfer agent was used and ii) step 1 was performed first and on the other hand the feature that the melt flow rate MFR22 lower than the first MFR21 not disclosed. This is sufficient to raise a prima facie relevant objection because there are clear reasons to believe that such ground is relevant. This prima facie relevant objection can be reversed based on the arguments presented by the proprietor on the substance of the case.

[5.6] It is concluded that the OD exercised its discretion in an appropriate manner when it decided to introduce the new ground of opposition based on A 100(c) and that no substantial procedural violation occurred. This ground of opposition is therefore de facto in the appeal proceedings.

[5.7] [The patent proprietor] argued that an objection based on A 83 had been introduced during OPs. This also amounted to a procedural violation in accordance with A 113(1), since it had not been aware of the argument in support of this new ground and thus was not prepared to provide an appropriate reply.

[5.8] The arguments of [the patent proprietor] are based on a misinterpretation of the decision at first instance. A 100(b) was not introduced by the OD. The fact that the OD checks whether an amended version of a set of claims as granted as far as the amendments are concerned meets the requirement of A 83 is in line with the requirement of A 101(3)(a). This does not mean that the objection under A 100(b) EPC has been introduced. Therefore, [the patent proprietor’s] request is no longer applicable.

Should you wish to download the whole decision just click here.