Saturday, 6 October 2012

T 1959/09 – Not Fresh

This decision contains an obiter dictum on fresh grounds which is a useful reminder of the relevant case law:

[6] [… T]he Board notes in passing that there appears to be no basis in G 10/91 for the general assumption that a ground of opposition raised against an independent claim may not subsequently be raised by the opponent against another independent claim, falling within the scope of the opposition, since otherwise a new ground for opposition would thereby be introduced. T 514/04 does not mention and elucidate the relevant passages in G 10/91 which support this assumption. Actually, G 10/91 appears to regard a new ground for opposition as being a “ground for opposition not covered by the statement pursuant to R 55 (c) EPC” (1973) (see G 9/91 [15-16]; G 10/91 and G 9/91 relate to consolidated proceedings), no indication being given in that decision which would justify the inference that this should be construed far more broadly as meaning any ground of opposition in respect of a specific given claim which was not covered by the statement pursuant to R 55(c) EPC 1973 (see in this respect T 1523/08 [2.1]). The Board takes the view that, as the present case abundantly demonstrates, the aforementioned assumption cannot be generally valid, but rather depends on the nature of each specific case under consideration.

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