T 302/09 – Take ‘Em All?

In this case the opponent had stated in its notice of opposition that the opposition concerned the patent in its entirety (“in vollem Umfang”) but had not provided any explicit arguments against claims 5 to 7. Nevertheless, the Opposition Division (OD) had considered the opposition to be against the patent in its entirety. The patent proprietor criticized this approach and cited T 737/92, which had stated, in point [2.2] of its reasons:

… The legal framework of any opposition case is uniquely defined by (i) the extent to which a patent is actually opposed and (ii) the grounds (in the sense of A 100(a), (b) and (c) EPC [1973]) upon which it is opposed, whilst its factual framework is determined by the facts, evidence and arguments adduced and set out in the Notice of Opposition pursuant to R 55(c) EPC [1973]. It is thus self- evident that neither grounds not actually supported by such facts, evidence and arguments, nor claims not actually opposed (as distinct from being merely formally mentioned in the Notice of Opposition) can be properly regarded as making up the “legal and factual framework” of the opposition …

However, the Board of appeal found this criticism to be unfounded:

[1] The proprietor has disputed the finding in this respect of the OD by arguing, in essence, that similarly to the case of T 737/92 also in the present case it would be justified a restrictive application of the principles set in G 9/91.

The Board notes, however, that all the claims of the granted patent are directed to display packs and that the opposition letter refers explicitly not only to “Anspruch 1” but also to “Abhängige Ansprüche” (i.e. to “claim 1” and to “dependent claims”). The Board notes further the undisputed fact that substantially all conceivable embodiments of the display pack defined in the granted claims 5 to 7 (which are formally not dependent from claim 1) appear also to be subject-matter of claim 1 as granted. Hence, the arguments against the patentability of the “dependent claims” that are given in the grounds of opposition, appear to the Board possibly intended to apply to the claims 2 to 7, independently as to whether these latter are explicitly formulated as dependent from claim 1 or not. 

The Board finds that these facts render the present case substantially different from that ruled in T 737/92 (wherein only arguments against process claims and not against composition claims were given) and that they do not justify an interpretation to the contrary of the explicit statement in the first paragraph of page 1 of the opposition letter that the opposition was made against the patent “in vollem Umfang” (in its entirety).

Hence, the Board concurs with the OD that the extent of the opposition embraces all granted claims.

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