T 1491/07 – Not Quite Fresh

The present decision deals with the appeal of the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form. The opposition had been filed on the ground of lack of novelty and inventive step. During the oral proceedings (OPs) before the OD the opponent had withdrawn the objection of lack of novelty against the set of claims that the OD then found to be patentable. The decision contained a short statement indicating that the OD found the request to be novel.

During the written phase of the appeal proceedings, the opponent argued that the claims as maintained were lacking novelty over late filed document D4. The patent proprietor pointed out that the opponent had withdrawn this ground and that, as a consequence, the ground of lack of novelty had to be considered as a fresh ground that could only be introduced with the patent proprietor’s agreement.

The Board does not think so, and makes us delve into some good old case law.

*** Translation from the French ***

[1.1] The Board considers the appeal to be admissible and the [patent proprietor’s] arguments to be unfounded, for the following reasons:

[1.1.1] In the present case the ground of opposition based on a lack of novelty initially was part of the notice of opposition. During the OPs before the OD the [opponent] has made a declaration according to which it did not maintain this ground […].

[1.1.2] According to decision T 274/95 […] a ground of opposition which is substantiated in the notice of opposition but which is subsequently not maintained before the OD, if sought to be re-introduced during appeal proceedings is not a “fresh ground of opposition” within the meaning of opinion G 10/91, and may consequently be re-introduced into the appeal proceedings without the agreement of the patent proprietor, in the exercise of the Board of Appeal's discretion. In the case underlying this decision the ground of opposition based on an inadmissible extension (A 100(c)) had been substantiated in the notice of opposition but during the OPs before the OD the opponent declared that it did not maintain this ground. The fact that the OD had not dealt with (abordé) this ground in its decision had no impact on the above finding.

[1.1.3] According to decision T 877/01 the Board has examined the ground of opposition – based on an inadmissible extension (A 100(c)) - of its own motion. This ground of opposition had been substantiated in the notice of opposition but during the OPs before the OD the opponent has declared that it would not maintain this ground. In its decision the Board referred to opinion G 10/91 and decisions T 274/95 and T 520/01 and found the re-introduction of this ground during the appeal proceedings to comply with these three references - as a consequence, the re-introduction of the ground into the proceedings can be authorised without the agreement of the patent proprietor – even if the opponent has not introduced it in its statement of grounds of appeal.

The present Board is of the opinion that there is no reason to deviate from this case law in the present case. Consequently, the ground of lack of novelty does not constitute a fresh ground of opposition within the meaning of opinion G 10/91.

[1.1.4] Decision T 520/01, which was cited by the [patent proprietor], concerns a case that differs from the present case. The ground of opposition (A 100(b)) had been substantiated in the notice of opposition and was not maintained by the sole opponent, who had made a corresponding declaration during the OPs before the OD, but the OD had not dealt with (abordé) this ground in its decision, and consequently the Board – following opinion G 10/91 – had considered that the re-introduction of said ground during the appeal proceedings constituted “a fresh ground of opposition” within the meaning of G 10/91, which, as a consequence, could only be admitted with the agreement of the patent proprietor.

[1.1.5] However, in the present case, the OD had dealt with the ground of lack of novelty in the contested decision […].

Hmm ... My understanding from all this is that the patent proprietor cannot hinder the Board from raising anew a ground that had been withdrawn if the OD has expressed its opinion on that ground in its decision. All decisions cited above appear to agree on this conclusion, which applies in the present case.

The situation is not so clear when the OD has not made any statement on that ground. T 274/95 does not require such a statement (it ignores the question), whereas T 520/01 sees the need for such a statement. 

I found it interesting to check what T 520/01 had to say on T 274/95:

“[1.9] In Decision T 274/95 the circumstances may seem similar to those of the present case. The Board admitted the ground into the appeal proceedings on the basis that the ground had been fully argued pursuant to R 55(c) and that the opinion G 10/91 was concerned with grounds that had not been substantiated in accordance with R 55(c). As set out in point [11(c)] of their decision, the Board considered that the ground was not sufficiently relevant to prejudice the maintenance of the patent which would justify rejection of the ground as inadmissible. In view of this, and the fact that the ground was considered to have “limited extent”, the Board decided to admit the ground and then to reject the ground for substantive reasons. No remittal was necessary and the proceedings were not delayed. In this result T 274/95 differs from the present case.”

Also, T 877/01 [4] has a statement on both T 274/95 and T 520/01 (my translation from the German):

“… T 520/01 linked the question of whether in such a case the ground of opposition can be taken up afresh (wiederaufgenommen) in the appeal proceedings without the agreement of the patent proprietor, to the additional requirement that the OD has made statements on (Stellung genommen) the ground of opposition in the contested decision. However, in the present case the contested decision […] comprises such a statement, so that even according to T 520/01 there is no objection to a re-introduction of the ground of opposition under consideration. Moreover, it is irrelevant whether a ground of opposition that has been taken up afresh by the Board had been mentioned in the statement of grounds of appeal or not, because even here the principle that the Office has to examine of its own motion applies: the EPO is not limited to facts, evidence and arguments of the parties (A 114(1)). Decision T 274/95, which has been cited by the [patent proprietor] does not say otherwise. In this case the Board found that it could examine and decide on a ground of opposition, which was not new, without the agreement of the patent proprietor. There were no other requirements. In particular, the question of whether the opponent or the Board takes up the ground afresh does not play any role in case T 274/95.”

If you need more of this stuff, have a look at the Case Law Book, VII D 3.2.3 c) ii) (page 793 et seq. in the English version).

Should you wish to download the whole decision (in French), just click here.