The patent under consideration was opposed on the grounds of lack of novelty (in particular over A 54(2) document D1 and A 54(3) document D4). Lack of inventive step was mentioned but not substantiated.
In its decision, the Opposition Division (OD) discussed the legal framework of the opposition and made the following statement:
“Legal framework of the present opposition
The legal framework of an opposition case is defined solely by (i) the extent to which the patent is actually opposed and (ii) the grounds upon which it is opposed.
With respect to the first criteria, the opponent stated in his notice of opposition […] that patent in suit is opposed in its entirety. The claims as granted comprise two independent claims : claim 1 relating to a composition consisting of (a), (b) and (c).and claim 11 relating to a dietary supplement for the prevention of inflammatory processes and articular disorders consisting of an admixture of (a) and (b), wherein the wording of features (a) and (b) are identical for both claims. On the subsequent pages of the notice of opposition, the indication of facts, evidence and arguments concern exclusively the subject-matter of claim 1. The proprietor, relying on the principles set out in G 9/91, argued that the second independent claim was outside the remit of opposition proceedings.
The Division notes that there is an inconsistency between, on one hand, the general statement at the beginning of the notice of opposition, and the subsequent pages of the notice of opposition on the other hand, which relate solely to one of the two independent claims. The Division considers the patent in suit was actually opposed in part only, despite the general statement mentioning that the patent was opposed as whole. In the present case, the patent in suit relates to two different chemical entities (as defined in claims 1 and 11), which only partly overlap. and allowing to the opponent to amend serious inconsistencies in his notice of opposition with respect to the extent of the opposition after expiry of the nine-month period fixed by Art. 99(1) EPC is contrary to the basic concept of post-grant opposition under the EPC.
With respect to the second criteria, the opponent has indicated that the grounds for opposition were lack of novelty and inventive step […]. In the notice of opposition, no facts, arguments or evidence with respect of inventive step were brought forward. Instead, in the last paragraph of the notice of opposition, it was mentioned that“Aus verfahrensokonomischen Gründen soll die Diskussion der erfinderischen Tatigkeit zurückgestellt werden bis Patentansprüche vorliegen, die zumindenstens das Kriterium der Neuheit erfüllen.”Such a statement cannot be considered to fulfill the requirements of R. 55(c) EPC. As the alleged lack of inventive step is not sufficiently substantiated and as the Division fails to see any reason why it should be introduced under Art. 114(1) EPC on the basis of the documents cited in the procedure, this ground of opposition is not part of the present proceedings. […]
In summary, the legal framework of the present opposition procedure is limited to the substantive examination of the independent claim actually opposed by the grounds actually supported by fact, evidence and arguments, namely novelty of independent claim 1 as granted. …”
The OD then found claim 1 of the patent as granted not to be novel over both D1 and D4 and maintained the patent in amended form.
Both the patent proprietor and the opponent filed an appeal against the decision of the OD. The patent proprietor requested the patent to be maintained as granted.
In its statement of grounds of appeal, the opponent raised novelty objections (based on D1, D3 and D4) but also inventive step objections (based on D9 in combination with D10 and D11 as well as on D8 together with the common general knowledge of the skilled person). Documents D8 to D11 had only been filed together with the statement of grounds of opposition.
The Board found claim 1 as granted to be novel.
What will it do with the inventive step objections?
[1] The OD decided that, as a result of the content of the notice of opposition, the legal framework of the opposition was limited to the substantive examination of novelty of claim 1 as granted […].
[2] The legal framework of an opposition case is defined by the extent to which the patent is actually opposed and by the grounds on which it is opposed.
[3] Regarding the extent to which the European patent is opposed, the opponent on page 1 of the notice of opposition, dated 13 August 2004, requested to revoke the patent in its entirety.
The grounds for opposition were indicated on page 2, first paragraph, of the notice of opposition, as being A 100(a) in combination with lack of novelty (A 54) and lack of inventive step (A 56). However, on the following pages the opponent only substantiated the ground for opposition in accordance with A 100(a) in combination with A 54 with regard to claim 1 as granted.
The only statement referring to the requirements of A 56 […] read (my translation):
“For the sake of procedural economy the discussion of inventive step is postponed to the stage at which the claims on file fulfil at least the criterion of novelty.”
[4] As far as the extent of an opposition is concerned, if an opponent requested revocation of the patent in its entirety, it is sufficient to substantiate the ground for opposition in respect of at least one claim of the patent for the requirements of R 76(2)(c) (R 55(c) EPC 1973) to be met. R 76(2)(c) does not refer to claims but rather requires that the notice of opposition should contain a statement of the extent to which the patent was opposed (see Case Law of the Boards of Appeal of the EPO, 5th Ed., 2006, VII.C.5.2.1(b)).
[5] The ground for opposition under A 100(a) in combination with A 56 has not been substantiated within the time limit prescribed in A 99(1) as required in R 76(2)(c). This ground for opposition, which has also not been introduced into the proceedings by the OD under A 114(1) in accordance with the principles set out in the decision of the Enlarged Board of Appeal G 10/91 [16], was not part of the opposition procedure […].
[6] Although not arguing against this issue of the OD’s decision, [the opponent], in the appeal procedure […] submits evidence and arguments substantiating an objection of lack of inventive step of the claimed subject-matter. Thus, A 56 is a “fresh ground for opposition” (see G 10/91 [18]) which in appeal proceedings can be considered only with the approval of the Patentee. As can be seen from Patentee’s written submissions it does not approve the introduction of this fresh ground for opposition.
[7] Thus, in summary the Board decides with regard to the legal framework of the present opposition/appeal procedure that the patent in suit was opposed in its entirety under A 100(a) on the ground of lack of novelty (A 54) and no more.
Finally the patent was maintained as granted.
Note that the present reasoning is not contrary to T 131/01, because the inventive step objections were not based on D1 but on documents that were new in the proceedings. The Board might have discussed inventive step (or remitted the case) had the opponent based its inventive step attack on A 54(2) document D1 he had used for the novelty attack.
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