T 613/10 – Gimme More

In this case Board 3.4.03 had to deal with the admissibility of an opposition.

The notice of opposition was filed on January 23, 2008. It consisted in filled-in form 2300 plus two pages containing a list of twenty further prior art documents and a statement which part of each of those documents was most relevant.

The time limit for filing an opposition (TFO) expired on January 25 (Friday).

A detailed explanation of the opponent’s case was received only on January 28 (Monday).

The Opposition Division (OD) rejected the opposition as inadmissible because the notice of opposition was insufficient.

The Board came to the same conclusion as the OD.

The decision is somewhat lengthy and not the most exciting read ever. If you just want a take-away summary, here is a translation of the headnotes:

1. When the admissibility of an opposition is to be examined, the circumstances of the individual case have to be considered, in particular if the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited (point [13] of the reasons).

2. It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient (point [17] of the reasons).

If you want the whole thing, please carry on:

*** Translation of the German original ***

[3] Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent by filing a written reasoned statement (A 99(1), first sentence, and R 76(1)). Pursuant to A 99(1), first sentence, and R 76(2)(c) the notice of opposition has to contain the following: (a) a statement of the extent to which the EP is opposed and (b) of the grounds on which the opposition is based, as well as (c) an indication of the facts and evidence presented in support of these grounds.

[4] For the opposition to be admissible the requirements of R 76(2)(c) have to be satisfied at the expiration of the nine-month TFO. Submissions that are filed before the EPO after the expiration of the TFO can, therefore, not be taken into account when the compliance with the above mentioned requirements is examined. Thus the written submission filed on January 28, 2008, i.e. after the expiration of the TFO, which inter alia contains 11 pages under the heading “Factual submissions and reasons” […] cannot be considered for this examination. The fact that – as explained by the [opponent] – the Opposition Division (OD) was in possession of the complete reasons for the opposition when it took up its work is irrelevant for this examination, too. The only thing that matters in the present case is the contents of the four-page form ‘Notice of opposition to a European Patent’ that was filed within the nine-month TFO, including two additional sheets […].

[5] By ticking [the appropriate boxes] in the ‘Notice of opposition’ form, which was filed on January 23, 2008, the opponent declared that it filed an opposition against the patent as a whole and that it raised objections pursuant to A 100(a) EPC 1973, i.e. lack of novelty and lack of inventive step.

[6] Moreover, the form ‘Notice of opposition’ and the two additional sheets belonging to it cited 26 documents, which were only filed after the expiration of the TFO. According to the wording of R 76(2)(c) it is sufficient to indicate the evidence within the nine-month TFO. However, the cited evidence does not have to be filed within the TFO; according to the established case law, it can still be filed at a later time (see e.g. T 328/87 [3.3.2]). Thus, when the admissibility of the opposition is to be examined, neither the content of the evidence (T 426/08 [5.1.3]) nor the conclusiveness (“Schlüssigkeit”) of the notice of opposition, i.e. that the submission, if correct, would make the request allowable, can be relevant. This question only arises when the evidence is assessed, i.e. when [the Board] establishes whether the evidence indeed proves the asserted facts. This belongs to the examination of the allowability of the opposition, which may, pursuant to A 101(1), only be envisaged when it is established that the opposition is admissible.

[7] What is disputed here is whether in the present case the requirement of indicating the facts presented in support of the grounds pursuant to R 76(2)(c) has been complied with, i.e. whether the opposition is sufficiently substantiated.

[8] For the opposition to be admissible it is sufficient if at the moment of expiration of the nine-month TFO there is a substantiated submission on behalf of the opponent for one of the grounds for opposition it invokes. The question of whether a notice of opposition complies with the minimum requirements for sufficiently substantiated grounds for opposition pursuant to A 99(1), first sentence, and R 76(2)(c), can only be decided in view of the overall context of the case under consideration (because several relevant factors, such as the difficulty of the questions to be decided, differ from one case to the other) (T 222/85 [4]). Thus, depending on the individual case, the requirement of sufficient substantiation pursuant to R 76(2)(c) is satisfied only if the relevant “facts and evidence” are indicated to an extent that is sufficient to ensure that both the patent proprietor and the OD know what the opposition is about (T 222/85 [4]). For this objective to be attained, the submissions on the grounds for opposition have to be understandable for both the patent proprietor and the OD without further investigations (T 2/89 [5]). Consequently, the OD and the patent proprietor have to be able to clearly understand the objection and the corresponding evidence (T 204/91 [5]) and must be able to review at least one of the invoked grounds for opposition without further investigation (T 453/87 [2.2]). Whether this is indeed the case has to be determined objectively from the point of view of the skilled person of the domain concerned by the patent.

[9] According to the established case law for an opposition to be admissible it is also necessary to point out the technical interrelationships (Zusammenhänge) between the prior art cited against [the patent] and the subject-matter claimed in the patent and to explain the conclusions drawn from them by the opponent (e.g. T 861/93 [5-6] and T 28/93 [4.1]). The kind of documents cited against the patent and the complexity of the claimed subject-matter determine the detail that is required for these technical assessments in each individual case. When the documents are short and the technical facts are simple, then it may not be necessary to cite concrete passages and to provide a comparison of features if the skilled person can directly understand the factual situation on his own, e.g. by reading the document. In this context all relevant circumstances have to be taken into account (see e.g. T 302/93 [2.4 et seq.] and T 1069/96 [2.3.3]).

[10] In the present case the notice of opposition consisted of only the four-page form and two additional sheets listing as evidence documents D1 to D26. For 25 of those documents (there are no indications for D25) particularly relevant passages or figures, respectively, are indicated, without there being any reference to one of the 26 claims of the impugned patent […]. The notice of opposition does not explain which of the documents concern which of the two grounds for opposition (lack of novelty and lack of inventive step). Nor has [the opponent] compared any of the cited passages or figures with the features of the subject-matter of one of the 26 claims, or established any technical interrelationships between the document and the corresponding claim of the impugned patent.

[11] It is relevant for the question of whether the present opposition is admissible whether these few indications in the form ‘Notice of opposition’ and the two additional sheets were sufficient for enabling the OD and the patent proprietor to understand without any further investigations what the opposition was about. In particular, it matters whether the indications enabled the OD and the patent proprietor to understand the submissions of the opponent at least in view of one of the 26 claims of the impugned patent, for at least one of the grounds of opposition, without any further investigations.

[12] The [opponent] is of the opinion that the number of claims of the impugned patent or of the documents cited against it is not relevant for the question of admissibility of the opposition. It, therefore, was of the opinion that it was not relevant that the impugned patent comprised 26 claims and that 26 documents had been cited in the ‘Notice of opposition’ form, because this number did not establish an abuse of procedure and because the documents were simple and easy to understand. Moreover, an opposition was not limited to a certain number of attacks or prior art documents.

[13] The Board cannot endorse this opinion.

Even though the case law has established that the substantiation of an opposition is sufficient if the indications regarding one of the documents cited against the patent enable the OD and the patent proprietor to review the validity (Stichhaltigkeit) of one of the grounds for opposition that are invoked, the circumstances of the individual case are indeed to be considered when the admissibility of an opposition is discussed, in particular if, as in the present case, the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited.

It also has to be taken into account that the ‘Notice of opposition’ form and the two additional sheets do not indicate which subject-matter of the 26 claims of the impugned patent and which of the two grounds for opposition that are invoked are concerned by the respective passages and/or figures of the 26 prior art documents.

[14] Taking into account these circumstances, the Board has come to the conclusion that the OD and the patent proprietor were not directly enabled to understand which claimed subject-matter of the impugned patent was to be attacked […] along which of the two grounds for opposition, and based on which text passages or figures of the 26 cited prior art documents, and that they, therefore, had to conduct their proper investigations.

[15] The opposition was directed at the impugned patent as a whole (see [5] above). As there were no further indications regarding specific claims of the impugned patent, the Board adopts the view of the OD according to which the subject-matter of all 26 claims of the impugned patent was attacked and not only, as stated by the [opponent], both independent claims 1 and 17. This conclusion is in line with the decision of the Enlarged Board of Appeal (EBA) G 9/91 [8], in which the EBA established that a limitation of an opposition to a certain part (subject-matter) of the patent is rather unusual in practice and that, as a rule, the patent is attacked as a whole. Because of this conclusion the Board is does not find persuasive the argument of the [opponent] according to which it was self-evident that only the independent claims mattered in an opposition.

Thus all 26 documents cited against the patent, including the text passages and figures that were indicated as particularly relevant, referred to the subject-matter of all 26 claims of the impugned patent and both grounds for opposition (lack of novelty and lack of inventive step), because both grounds were invoked without any concrete reference to any of the claims or any document cited against them. Thus each of the documents cited could in theory be considered to be novelty-destructive for the subject-matter of each of the 26 claims, which alone amounts to 676 possible attacks. And even if at first only the two independent claims of the impugned patent had to be considered for the examination of novelty, each of the 26 documents cited against the patent could be allocated to each of these two independent claims, which already amounts to 52 possible attacks. As to inventive step, the number of possible attacks was much higher because combinations of the above-mentioned documents cited against the patent were to be considered in the context of inventive step, even though no combinations were mentioned in the ‘Notice of opposition’ form and the additional sheets.

Therefore the Board agrees with the [patent proprietor] that the present opposition confronted the patent proprietor and the OD with a very considerable number of combinations and, for this reason alone, would in any case have required proper investigations on behalf of the patent proprietor and the OD. Thus it was not necessary to answer the question whether the content of the 26 documents cited against the patent in the ‘Notice of opposition’ form could at all be considered in the examination of the sufficient substantiation of the opposition (because these documents had only been filed after the TFO had expired).

[16] But even if the Board assumed, in favour of the [opponent], that there was a clearly discernable intention to contest the novelty of the subject-matter of claims 1 and 17 based on document D4 and the relevant text passages and figures cited in this context, this could not lead to the opposition being considered admissible because even in novelty attacks it is, as a rule, necessary to point out the technical interrelationships between the individual features of the subject-matter claimed in the impugned patent and the state of the art resulting from a document, as well as the conclusions drawn from them (see above, point [9]). In the present case it was indeed necessary to point out a technical interrelationship because, as convincingly argued by the [patent proprietor] in view of the subject-matter of claims 1 and 17, the corresponding technical situation was not simple and intrinsically directly understandable for the skilled person, so that he could not see or review the relevance of the cited passages of document D4 for the subject-matter of claims 1 and 17 of the impugned patent, even if the content of this document, which had been filed after the expiration of the TFO, could have been taken into account. The same holds true for document D1.

[17] The [opponent] put forth several arguments why both the OD and the patent proprietor could have reviewed the present opposition without further ado under the present circumstances, but the Board cannot endorse these arguments.

It is true indeed that the effort generated by the examination of an opposition for the OD of the EPO is not relevant for the examination of the opposition. This notwithstanding, according to the established case law, for an opposition to be admissible the OD must be able to understand (verstehen und nachvollziehen) the submissions establishing the reasons (Begründung) for the opposition, which have been filed until the expiration of the TFO, without further ado (see above, point [8]).

Moreover, neither the law nor the case law establish a duty for the patent proprietor to successively “work off” (abarbeiten) the documents that have been cited in an opposition without an indication of facts presented in support of the opposition in order to establish which of the text passages and/or figures of those documents, which have been cited as being particularly relevant, could be, say, destructive of the novelty of the independent claims of its patent. Rather, the opponent has to provide reasons for its opposition and the content of the notice of opposition has to satisfy certain legal requirements for the opposition to be admissible (see point [3] above). It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient.

The above mentioned requirement for reasons only concerns oppositions, but not search reports established by the EPO. Therefore, oppositions and search report are not comparable. The European search report mentions those documents, available to the EPO at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the EP application relates is new and involves an inventive step (R 61(1)). Incidentally, these documents are cited together with the claims to which they refer and, as the case may be, the relevant parts of each document are identified (R 61(2)). However, the search report as such does not have to contain reasons like those that are required for an opposition.

[18] The [opponent] also considers that, similar to case T 302/93, the indications provided in the notice of opposition were sufficient for the opposition to be admissible. The present situation was equivalent to the one underlying decision T 302/93 because the ‘Notice of opposition’ form and the two additional sheets indicated the relevant text passages of the cited documents without giving explicit information on the particular relevance of the text passages cited and on the precise ground for opposition or patent claim to which the relevant passage was intended to refer. As in cas T 302/93 the cited passages for one of the documents cited against the patent, i.e. document D4, were sufficient for enabling to enable the OD and the patent proprietor to establish the link between those passages, the invoked ground of novelty and claim 1 of the impugned patent. Thus the present opposition was as admissible as the one underlying decision T 302/93.

However, the Board shares the opinion of the OD and of the [patent proprietor] according to which the present factual situation is not equivalent to the one underlying case T 302/93.

As explained by the [patent proprietor], in the opposition proceedings on which decision T 302/93 is based [the opponent] had already stated in the notice of opposition that the documents D1 and D3 cited with their relevant passages referred to claims 1 – 6 and claim 1, respectively. The [opponent] is correct in stating that in case T 302/93 also there was no explicit indication for document D1 as to which ground for opposition was invoked and to which claim precisely the indicated relevant passage referred, and that the Board nevertheless based its reasoning in decision T 302/93 on the assumption that this passage self-evidently referred to the subject-matter of independent claim 1 and its lack of novelty. However, in the present case the [opponent] has not cited any claim of the impugned patent as being concerned by the cited passages of the 25 documents of the notice of opposition and, therefore, in contrast to case T 302/93, has not established any connection whatsoever between at least one of the documents cited against the patent and at least one of its claims. The Board considers this to be an essential difference between the present case and case T 302/93.

Another significant difference results from the fact that in case T 302/93 the patent as granted comprised only 9 claims (against 26 claims in the present case) and that the notice of opposition cited only 8 documents against the patent (whereas there are 26 documents cited in the present case), because, as explained under point [13] above, the number of documents cited against the patent and the number of claims of the impugned patent is relevant for the question of admissibility.

[19] The Board also considers the factual situation underlying case T 1069/96 not to be comparable with the one underlying the present case.

In case T 1069/96 what was filed was not the ‘Notice of opposition’ form but a writ of opposition (Einspruchsschriftsatz) comprising short indications of the facts and evidence, and the opposition was essentially based on an alleged prior public use. There was no explanation whatsoever in this writ of opposition in which of the evidence filed for establishing the alleged prior use the individual features of the subject-matter of the impugned patent were disclosed. As the case underlying decision T 1069/96 was not complicated as to its technical substance, the Board was of the opinion that the average skilled person was able to establish the subject-matter of the alleged prior use to the extent needed for a comparison of this allegedly used subject-matter with the subject-matter of the impugned patent during the subsequent substantive examination (see point [2.3.4.2] of the reasons).

The present factual situation differs from the one underlying decision T 1069/96 in that the extent of the cited prior art is much greater than the one cited in case T 1069/96. Moreover, the Board is not of the opinion that that the present technical situation is so simple that the opponent could refrain from pointing out a technical interrelationship and explaining its relevant conclusions (see above, point [16]).

[20] For the above reasons the opposition filed within the nine-month TFO does not contain a sufficient indication of the facts invoked as reasons (Begründung) for the opposition, for both grounds for opposition (lack of novelty and lack of inventive step). Thus none of the grounds for opposition invoked have been substantiated and the requirements of R 76(2)(c) have not been complied with in the present case. Therefore, the OD rightly dismissed the opposition as inadmissible pursuant to R 77(1). […]

The appeal is dismissed.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.