T 2233/09 – Objects In A Drawer

The opponent filed an appeal after the patent had been maintained in amended form.

In what follows the Board deals with the admissibility of new grounds for opposition:

[1.1] The [opponent] raised in the statement of the grounds of appeal an additional ground of opposition, namely lack of disclosure according to A 100(b) EPC 1973.

However, A 100(b) EPC 1973 was not one of the grounds of oppositions raised by the Opponent within nine months of the publication of the mention of the grant of the patent, as required by A 99(1) EPC in conjunction with R 76(2)(c).

Moreover, it is established jurisprudence of the Boards of Appeal of the EPO that new grounds of opposition not submitted within said time limit of nine months can be introduced into the appeal proceedings only with the consent of the Patent Proprietor (see G 10/91 [3]).

Since in the present case the patent proprietor did not consent to the introduction of this new ground of opposition […], it is to be rejected as inadmissible.

[1.2] The [opponent] argued in the statement of the grounds of appeal that claim 1 extended beyond the content of the original parent application of which the patent in suit is a divisional.

The Board notes that A 100(c) EPC 1973 was also not one of the grounds of opposition raised by the opponent within the time limit of nine months, as required by A 99(1) in conjunction with R 76(2) (c).

Moreover, even though the granted claim 1 had been modified during the opposition proceedings before the Opposition Division and the compliance of the amended claims with A 123(2) was considered in the decision under appeal, the present objection, which was never raised at first instance, does not concern an extension beyond the content of the application as originally filed, i.e. the compliance with the requirement of A 123(2), but a different legal ground, namely an extension with respect to the original parent application of which the patent in suit is a divisional, i.e. a compliance with the requirement of A 76(1) EPC 1973.

Therefore, it concerns a legal objection which is equally covered by A 100(c) EPC 1973 but is different from A 123(2).

The Board notes in this respect that the Enlarged Board of Appeal of the EPO decided in G 7/95 [6, 7.1] with respect to the different legal grounds covered by A 100(a) EPC 1973 that legal grounds covered by the dispositions of A 100(a) which have not been substantiated in due time can only be introduced into the proceedings with the consent of the patent proprietor.

The Board thus finds that the same principle must apply similarly to A 100(c) 1973 EPC, which concerns both the extension beyond the content of the original application (A 123(2)) as well as, in case of a divisional application, the extension beyond the content of the original parent application (A 76(1) EPC 1973).

Since in the present case no objections with respect to A 76(1) EPC 1973 had been substantiated during the opposition proceedings, such a new legal ground can be introduced in the appeal proceedings only with the consent of the patent proprietor.

Since, the patent proprietor did not consent to the introduction of this new ground of opposition […], it is to be rejected as inadmissible.

[1.3] For the reasons mentioned above the decision T 922/94 [2.2], cited by the [opponent], referring to the power of the Board to consider the compliance with the requirement of A 123(2) of claims amended during the opposition proceedings, cannot apply to the present case.

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NB: The decision was also discussed on Le blog du droit européen des brevets (here).