T 1549/07 – What’s In Is In (*)

Thought everything had been said on late filed grounds for opposition? Well, perhaps not.

The present case deals with an opposition that had been rejected by the Opposition Division (OD). But let us have a closer look at the proceedings that led to this verdict.

When filing its notice of opposition, the opponent raised objections under A 100 (a), all based on one single document D1.

In its summons to oral proceedings (OPs) the OD referred only to grounds of opposition under A 100 (a).

In a written submission dated February 12, 2007, the opponent introduced documents D2 and D3. It explained that those documents disclosed the very same methods and, therefore, products as the opposed patent and added:

“In case this is contested, the question arises whether there is [reason to raise] a ground for opposition pursuant to A 100 (b) because the disclosure is insufficient.”

In its response dated April 27, 2007, the patent proprietor contested that the methods according to D1, D2 and D3 would necessarily lead to a product according to the opposed patent. It further stated:

“Therefore, it is not necessary to examine the ground for opposition pursuant to A 100 (b). Moreover, no such ground was formulated (aufgeführt).”

In its letter of June 28, 2007, the opponent state once more that in case the arguments of the patent proprietor in favour of novelty were accepted, then “the ground for opposition pursuant to A 100 (b) [would have] to be examined”. It also submitted results of studies (referred to as “VB1”) intended to show that the claimed effect was not reached under the conditions of example 1 of the opposed patent.

As already mentioned, the OD dismissed the opposition.

In its statements of grounds of appeal, the opponent contested the way in which the OD had dealt with the questions of insufficient disclosure, novelty and inventive step.

In its response, the patent proprietor requested the Board not to deal with the ground for opposition pursuant to A 100 (b).

In what follows the Board tackles this problem.

*** Translated from the German ***

Ground for opposition pursuant to A 100 (b)

[1] This ground for opposition was not raised within the time limit for filing an opposition and, therefore, has to be considered as belated. This also holds true for the VB1 data.

[1.1] In its opinion G 10/91, the Enlarged Board of appeal (EBA) […] has found that 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. Moreover, it was decided in decision T 1002/92 that late filed evidence and corresponding arguments were to be admitted into the proceedings in exceptional cases only, if prima facie relevant reasons suggested that the late filed documents would prejudice the maintenance of the patent.

Therefore, the Board of appeal notes that in principle the OD had the right to admit or introduce, respectively, both the new ground for opposition pursuant to A 100 (b) and the late filed data VB1 into the proceedings, even during the OPs.

[1.2] However, the case law of the Boards of appeal of the EPO has established that when new grounds for opposition are introduced into the proceedings by the OD, this has to be done in such a way that it is ensured that the proprietor is informed not only of the new ground for opposition (i.e. the new legal basis for the opposition), but also of the legal and factual reasons (i.e. its substantiation) that substantiate the new ground: the patent proprietor has to be fully informed of the case which he has to meet, and have a proper opportunity to present comments and to prepare an appropriate defence against the new grounds for opposition (see Case Law, 6th edition, VII-D 3.2.3 c) i)). In particular, the stages (Phasen) of admission/introduction and assessment/substantiation should be treated. In principle, the parties should be informed on the new objections in writing, as soon as possible (T 433/93; T 1164/00; T 64/03).

[1.3] In the present case the Board notes that the late submission and the admission of the new ground for opposition into the proceedings have not been mentioned in writing or orally. The OD has not mentioned those matters in its notification of June 2, 2006, and has never informed the patent proprietor during the opposition proceedings that it intended to introduce this new ground. In particular, it can be seen from the minutes of the OPs before the OD […] that the discussions concerned exclusively the substantiation of the ground for opposition pursuant to A 100 (b). The discussions were terminated after a pause for deliberation by the OD, via the announcement of the decision that the requirements of A 83 were fulfilled. In other words, the OD simultaneously informed the patent proprietor on the – implicit – admission of the ground for opposition pursuant to A 100 (b) and its unsuccessfulness. The late submission of the ground for opposition pursuant to A 100 (b) and of the VB1 data during the opposition proceedings has never been criticized by the patent proprietor. It can be seen from both the minutes […] and the decision […] that the patent proprietor had the possibility to comment on this ground for opposition (A 113(1)), but on the other hand, neither the decision nor the minutes of the proceedings contain indications as to which criteria and reasons determined the decision of the OD when it exercised its discretion to admit the ground for opposition pursuant to A 100 (b) and the experimental data VB1, which were filed belatedly in order to substantiate this ground for opposition, into the proceedings and whether the OD has indeed weighed the pros and cons of whether it should exercise its discretion. Considering the late submission of new legal and factual elements (rechtlicher und tatsächlicher Sachverhalte), it would have been necessary to expose the considerations that appeared relevant when weighing the pros and cons […] The question of whether the first instance has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way can be examined by the Board of appeal (cf. Case law, 6th edition, VII-E 6.6).

[1.4] In the present case the Board has to note that the decision to introduce the new ground for opposition pursuant to A 100 (b) and to admit the VB1 data has not been justified by the OD. Therefore, the Board cannot examine which criteria were decisive for the OD’s introduction of the new ground for opposition as well as the VB1 data. Thus, the question arises whether there has been a substantial procedural violation which justifies that the decision be set aside and the case be remitted to the first instance (cf. Article 11 RPBA). As far as this question is concerned, the Board is clearly of the opinion that the insufficiently reasoned decision of the OD constitutes a procedural violation, but that it was never criticized during the OPs and has not led to a decision that adversely affects the patent proprietor. In view of this, a remittal to the first instance based on this reason only would not make any sense.

Request of the [patent proprietor] concerning A 100 (b)

[2] The [patent proprietor] has requested that “the ground for opposition pursuant to A 100 (b) not be dealt with any more”.

[2.1] The EPC does not contain any provisions, nor does [the Board] know any other regulations (in contrast to the request to exclude certain documents from file inspection, for example) allowing to grant such a request aiming at excluding from the proceedings, at the appeal stage, a ground for opposition that has been introduced into and discussed in the proceedings. This way of proceeding has no legal basis and would violate the right of the opponent to have the competent department of the EPO examine the grounds for opposition which it has raised and which have been introduced – perhaps, wrongly (zu Unrecht) – into the proceedings (A 101(1)).

[2.2] Quite to the contrary, the Board is of the opinion that this request is inadmissible, for the following reasons:

[2.2.1] According to R 100(1) the provisions relating to proceedings before the department which has taken the decision impugned – here, the OD – shall apply to appeal proceedings, unless otherwise provided. In the present case, pursuant to A 101(1), the OD had the duty to examine, in accordance with the IR, whether at least one ground for opposition under A 100 prejudices the maintenance of the European patent.

[2.2.2] Normally, the OD only examines the grounds for opposition which have been duly submitted and substantiated, pursuant to A 99(1) together with R 55 c) EPC 1973, i.e. in the present case, A 100 (a) together with A 54 and A 56.

[2.2.3] However, in the present case the OD has decided to admit the ground for opposition pursuant to A 100 (b) into the proceedings, which, as has already been explained, is possible in application of A 114(1). […]

[2.2.4] This decision of the OD has the consequence that the ground pursuant to A 100 (b) is not a “fresh ground” within the meaning of the opinion G 10/91 of the EBA. As a matter of fact, in decision G 1/95 [5.3] the EBA has declared that when opinion G 10/91 used the term “fresh ground for opposition” it intended to refer to a ground for opposition

“which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the OD in application of A 114(1) and in accordance with the principles set out in G 10/91 [16]”.

NB: Why do the Boards so often cite G 10/91, which is an empty shell referring to G 9/91? To find the reasons, you have to go to G 9/91.

Consequently, as there is no “fresh” ground for opposition within the meaning of opinion G 10/91 in the appeal proceedings, there is no need for the approval of the patent proprietor in view of the introduction of the ground for opposition pursuant to A 100 (b).

Thus the OD’s admission of the ground for opposition pursuant to A 100 (b) constitutes a new, additional legal basis with respect to the legal basis indicated in the notice of appeal (A 100 (a)); the opposition is now based on these grounds.

[2.2.5] Moreover, the EBA has made the following statement in its opinion G 10/91:

“The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the OD on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the OD has not been based.”

It should be noted that the impugned decision has dismissed the opposition and has maintained the patent unamended. Therefore, the patent proprietor has not been a “losing” party that could contest the decision of the OD. The fact that the OD has insufficiently reasoned its decision on the admission/introduction of the late filed ground for opposition does not alter this fact. In particular the Board of appeal is not entitled (befugt) to set aside this decision for this reason, the decision of the OD not having led to a final decision by which the patent proprietor was adversely affected.

Quite to the contrary, as the OD has carried out an examination of the ground for opposition pursuant to A 100 (b), as the impugned decision has dealt with (sich auseinandersetzen) the belated ground of appeal in detail […] and as the [patent proprietor] has elaborated on this topic in its statement of grounds of appeal, the Board is clearly of the opinion that it is necessary for it to comment on this ground for opposition.

[2.3] To sum up, the ground for opposition pursuant to A 100 (b) has been admitted into the proceedings by the OD and, therefore, is part of the impugned decision. Thus the ground for opposition pursuant to A 100 (b) has to be further examined by the Board of appeal and the request of the [patent proprietor] “not to deal any more” with this ground has to be dismissed by the Board of appeal.

The Board then examined the evidence filed by the opponent (both the VB1 data and additional evidence VB2 filed during the appeal proceedings) and found that the factual situation had completely changed. It then pursued:

[4] The present case corresponds to a somewhat unusual situation: although the new ground for opposition pursuant to A 100 (b) and the trials VB1 that had been filed belatedly by the [opponent] had been admitted into the proceedings by the OD, the OD has decided that the VB1 data did not sufficiently substantiate this ground. Thus the invention of the impugned patent was considered to have been sufficiently disclosed. Consequently, the decision of the OD to admit a late filed, supposedly prima facie highly relevant, but finally unsuccessful ground for opposition, appears not to adversely affect the patent proprietor at first sight […] However, the present case shows that this decision of the OD can entail very serious, negative consequences for the patent proprietor and could even cause the revocation of the patent, in the worst case scenario for the patent proprietor.

This being said, the patent proprietor has not criticized the legitimacy (Rechtmässigkeit) of this admission during the opposition proceedings. Moreover, as the opposition was rejected, the patent proprietor had no possibility to file an appeal against this decision (A 107). However, the opponent could do so and use the appeal proceedings to further substantiate the late filed ground for opposition with new and more relevant evidence, and it has done so by filing VB2. Thus the opponent has been allowed, at a very late stage of the proceedings, well beyond the time limit for filing an opposition, to significantly extend the framework of the factual reasons for the opposition, and, consequently, its factual submissions (Sachvortrag).

Therefore, it is particularly appropriate in this situation to remit the case to the first instance pursuant to A 111(1) in order to ensure that the [patent proprietor] is not deprived of an instance for examining this late submission.

To read the whole decision (in German), click here.

To have a look at the file wrapper, click here.

(*) Austrian subtitle: Wos ligt des pickt.