T 917/07 – Ticking Is Not Enough

One of the trickier questions concerning the grounds for opposition is whether by raising – and, as the case may be, substantiating - the ground of inventive step an opponent also implicitly raises the ground of novelty, and vice versa.

In G 7/95 [headnote], the Enlarged Board (EBA) has made it clear that

“In a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1) and A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.”

I am not aware of an EBA decision dealing with the converse situation where the patent had been opposed on the ground of novelty only and where the ground of lack of inventive step had been raised only during the appeal proceedings. However, the same reasoning should hold true, and this is indeed the conclusion of T 928/93 [3].

Of course, the normal precautionary reaction of opponents would be to raise both grounds, even if at the time of filing one had only arguments for one of them. Therefore, the Boards have spent some thought on what to do with unsubstantiated grounds.

T 131/01 has pointed out that

“In a case where a patent has been opposed under A 100(a) on the grounds of lack of novelty and inventive step having regard to a prior art document, 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 - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - 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.”

Does this also hold true for the converse situation, where the grounds of lack of novelty and lack of inventive step have been raised but where only the lack of inventive step has been substantiated? That is the question dealt with in the present decision.

*** Translated from the German ***

[3] On form 2300.1, which can be used for filing an opposition, the box “lack of novelty” had been ticked, but the lack of novelty was not discussed in the notice of opposition, nor in the subsequent opposition proceedings. According to the established case law of the Boards of appeal (see, for instance, T 105/94) a ground for opposition that has not been substantiated is deemed not to have been raised.

According to decision G 10/91 [18] of the EBA, in order for a new ground of opposition to be examined in appeal proceedings, the patent proprietor has to give its approval to the introduction of a this new ground.

In the present case the [patent proprietor] has refused its approval, so that the ground of lack of novelty cannot be admitted in the appeal proceedings.

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