T 1044/08 – Together We Fall

In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

The opposition had been based on the grounds of lack of novelty, lack of inventive step as well as insufficiency of disclosure. The notice of opposition explained that independent claim 1 and all dependent claims 2 to 22 were lacking inventive step … and that dependent claim 15 (depending on claim 1 only) also lacked novelty.

Claim 15 read:

The coating composition of claim 1 further containing high-boiling organic liquid and said high-boiling organic liquid is an oxohydroxy liquid selected from the group consisting of tri- and tetraethylene glycol, di- and tripropylene glycol, the monomethyl, dimethyl, and ethyl ethers of these glycols, liquid polypropylene glycols, diacetone alcohol, the low molecular weight ethers of diethylene glycol and mixtures of the foregoing.

As claim 1 had not been attacked on the ground of novelty, the OD concluded that claim 1 was novel.

In its notice of appeal, the opponent contested this formal approach and pointed out that the novelty attack against claim 15 encompassed claim 1.

The patent proprietor argued that this was a new ground as far as claim 1 was concerned and that it refused its consent to treat this ground.

The Board does not share this view:

[2.1] The [opponent] argued that the ground for opposition under A 100(a) in combination with A 54 had been substantiated as required in R 55(c) EPC 1973, now R 76(2)(c), within the time limit prescribed in then applicable A 99(1) EPC 1973. In support of this position the [opponent] referred to page 16 of the notice of appeal filed on 29 September 2005. The [opponent] submitted further that the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on facts and arguments which had been set out in the cited passage of the notice of opposition.

The [patent proprietor] maintained that the ground for opposition under A 100(a) in combination with A 54 should be disregarded since the opponent, in his notice of appeal, had merely objected to dependent claim 15 lacking novelty. Since novelty of an independent claim had not been in dispute during opposition proceedings, that ground for opposition had not formed part of the legal framework of those proceedings. The objection under A 100(a) in combination with A 54 against claim 1 had to be considered a fresh ground for opposition. As the patentee, he did not agree to its introduction at the appeal stage.

[2.2] Hence, it has to be examined whether or not the objection of lack of novelty against claim 1 was substantiated in the statement setting out the grounds of opposition which, therefore, did not require the consent of the patentee to examine it in the appeal proceedings.

As to the required substantiation of the ground(s) of opposition, the function of R 55(c) EPC 1973 (now R 76(2)(c)) is, inter alia, to establish the legal and factual framework within which the substantive examination of the opposition is in principle to be conducted, thereby giving the patentee a fair chance to consider his position at an early stage of the proceedings (see G 9/91).

Therefore, according to established case law, an objection raised in opposition must be substantiated in the notice of opposition in such a way that the facts and arguments are sufficient for the EPO and the patent proprietor to understand the case against the patent without further investigation (T 2/89 [3]). In decision T 222/85 [4], the board held that the requirement in R 55(c) was only satisfied if the contents of the notice of opposition were sufficient for the opponent’s case to be properly understood on an objective basis, from the point of view of a reasonably skilled man in the art to which the opposed patent related.

[2.3] Regarding the extent to which the European patent is opposed, the [opponent] on page 1 of the notice of opposition as well as on page 2 of Form 2300, both filed on 29 September 2005, requested revocation the patent in its entirety. The grounds for opposition were indicated on page 1 of the notice of opposition as well as on page 2 of Form 2300 as being A 100(a) in combination with A 54 (lack of novelty) and A 56 (lack of inventive step), as well as A 100(b).

[2.4] The issue of novelty was explicitly addressed on page 16 in the context of dependent claim 15. In this passage it is stated that example 1 of document D5 had disclosed all the features of claim 1 of the patent in suit with the exception of the presence of a low-boiling organic liquid. The [opponent] further argued that, since silanes undergo hydrolysis, low-boiling organic liquids like methanol and ethanol are formed that remain in the composition. Thus, due to hydrolysis of 3-glycidyloxypropyltrimethoxysilane (GLYMO) mentioned in example 1 of document D5, methanol and GLYMO were both present in the composition. As a consequence, the coating composition according to example 1 of document D5 contained more than 1 weight percent of a low-boiling organic liquid as required.

[2.5] As the [opponent] appropriately pointed out, the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on the facts and arguments set out on page 16 of the notice of opposition summarised in the previous paragraph. Although the presentation of the objection under A 100(a) in combination with A 54 in the context of dependent claim 15 was not straightforward, the skilled reader, giving full consideration to the explicit reference to example 1 of document D5 and the arguments regarding hydrolysis of silanes, was able to recognise and understand the gist of the attack on the patent under said ground of opposition which included the subject-matter of claim 1. Inferring from page 16 of the notice of opposition that the opponent had acknowledged novelty of claim 1 and merely objected to dependent claim 15 is not an objective assessment of the [opponent’s] submissions. Therefore, the board is of the opinion that, in so far as the ground for opposition under A 100(a) in combination with A 54 is concerned, the opponent’s submissions were sufficient for the OD and the patent proprietor to understand the [opponent’s] case without further investigation.

[2.6] It follows that in the present case the ground for opposition under A 100(a) in combination with A 54 was substantiated as required by R 55(c) EPC 1973 (now R 76(2)(c)) and did not constitute a fresh ground for opposition. Therefore, its consideration by the board of appeal did not require the [patent proprietor’s] approval (see decision G 10/91).

The Board finally found claim 1 to be novel but to lack inventive step. The patent was revoked.

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