T 1523/08 – Not Fresh

In this case claim 1 of the patent as granted was attacked on the grounds of lack of novelty and of inventive step; dependent claim 4 only for lack of inventive step.

In response to the preliminary opinion expressed by the Opposition Division (OD) the patent proprietor filed a new main request, claim 1 of which was a combination of claims 1 and 4 as granted.

The opponent attacked this claim for lack of novelty.

The patent proprietor requested the novelty attack not to be admitted as, in the notice of opposition, claim 4 was only attacked for lack of inventive step. The ground of lack of novelty, therefore, was a new ground of opposition.

The OD dismissed this request because it could not “detect a new ground for opposition in the contesting of the novelty of claim 1 as the notice of opposition indicated the patent to be attacked in its entirety on lack of novelty as well as inventive step.

The OD finally maintained the opposed patent on the basis of the third auxiliary request.

The patent proprietor filed an appeal.

The main request before the Board was identical to the main request before the OD.

The patent proprietor reiterated his argument against the novelty attack.

Here is what the Board had to say:

[2.1] Novelty as a fresh ground for opposition It is a fact that claim 4 as granted, which has been combined with claim 1 as granted to form claim 1 of the main request, was only objected for lack of inventive step in the notice of opposition.

However, lack of novelty as a ground for opposition was raised in the notice of opposition and substantiated e.g. with respect to claim 1. Hence, lack of novelty as a ground for opposition cannot be regarded as a fresh ground for opposition.

This is in line with G 10/91 [15-16], in which it is stressed that the grounds for opposition are linked to the “statement pursuant to R 55(c) EPC 1973”, with R 55(c) EPC 1973 requiring the opponent to present an indication of the facts and evidence in support of the grounds for opposition.

This means that a ground for opposition raised must be substantiated with facts and evidence, but it cannot be inferred that a ground for opposition raised and substantiated in the notice of opposition with respect to an independent claim - in the present case, claim 1 - but not with respect to a dependent claim - in the present case, claim 4 - will amount to the introduction of a fresh ground for opposition when substantiated for the combination of the independent and the dependent claim - in the present case, the combination of claims 1 and 4 - only later in the proceedings.

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