In this appeal against the rejection of an opposition, Board 3.3.05 had to deal with a late filed ground for opposition: lack of inventive step.
I found the decision interesting because it limits/qualifies to some extent the application of the principle set out in T 131/01.
*** Translation of the German original ***
[1.5.1] The ground for opposition that the claims lacked inventive step was raised after the [expiration of] the nine-month time limit for filing an opposition and submitted when document D2 was filed on February 10, 2009. The [opponent] only submitted arguments concerning the lack of novelty with respect to D2. It added the remark that in view of the same facts and reasons the subject-matter of the patent did not involve an inventive step.
The Opposition Division (OD) considered the ground for opposition that the claims lacked inventive step not to have been substantiated and, therefore, did not introduce it into the proceedings.
It has to be examined whether the decision of the OD not to introduce the fresh ground for opposition [that the claims lacked] inventive step into the proceedings was correct.
According to T 1002/92 the examination of the prima facie relevance of a fresh ground for opposition presupposes that “facts and evidence” supporting this ground are submitted. “The mere stating of a fresh ground without any indication of the fresh facts, evidence and argument supporting it would obviously be inadmissible, either within or after expiry of the opposition period.” (see T 1002/92 [3.2])
In the present case [the opponent] did not submit any arguments regarding inventive step because, according to the [opponent], this would be self-contradictory in a situation where there had been a novelty objection based on the same document. T 131/01 is based on a similar case: both novelty and inventive step had been mentioned as grounds for opposition within the nine-month time limit for filing an opposition, but only the objection of [lack of] novelty had been substantiated. In this case the Board of appeal reached the conclusion that the examination of inventive step presupposed novelty, which was indeed contested by the opponent, and that in such a case it was not necessary to explain the objection of lack of inventive step in detail. If this objection is later on raised in detail, this did not amount to a fresh ground for opposition (see T 131/01 [3.1]).
However, the present situation is different. Here even the substantiation of the objection of [lack of] novelty was quite scanty, and, therefore, it is quite questionable whether the condition established in T 222/85 – according to which the contents of such notice have to be sufficient for the opponent’s case to be properly understood on an objective basis [headnote 2] – is satisfied. As in the present case – contrary to the case underlying T 131/01 – novelty has not been discussed in detail, the skilled person cannot understand which features could be relevant for inventive step in case the novelty objection was not successful.
The discussion of novelty in the letter dated February 10, 2009, does not contain any indications regarding the claims that are understood not to be novel, nor does it contain an analysis of the features of the claims. It is not explained (thematisiert) at all why and where the amounts indicated in the method according to claim 1 of the opposed patent or the parameters indicated in claim 7 of the opposed patent are (allegedly) disclosed in combination with the other features in D2. Thus the skilled person does not know to which claim the objection refers and which features are disclosed where.
Also, the supplementary written submission of February 10, 2009, does not explain differences with respect to the opposed patent, which is another difference with respect to the case underlying T 131/01 (see also T 131/01 [3.2]).
In order for a ground for opposition to be considered to be substantiated, the OD and the patent proprietor also have to be able to review the ground for opposition that has been invoked without further investigations (see T 453/87 [2.2]). This condition is not fulfilled in the present case for the ground for opposition that the claims lack inventive step.
To sum up, [the Board] notes that the letter dated February 10, 2009 is not suitable for allowing [the Board and the patent proprietor] to understand the argument of the [opponent] regarding inventive step.
Thus the ground for opposition [that the claims lack] inventive step is to be considered unsubstantiated and, in line with T 1002/92, the prima facie relevance of the patent document D2 does not have to be examined. The decision of the OD in this respect is correct.
The OD has decided to introduce D2 into the proceedings because this document was considered to be more relevant for the question of novelty than D1. However, this does not mean that D2 was considered to be prima facie relevant in all respects (insgesamt).
Thus the ground for opposition [according to which the claims lack] inventive step is a fresh ground for opposition.
As the patent proprietor has not given its approval for the examination of the ground for opposition [that the claims lack] inventive step, this ground cannot be examined (see G 10/91 [18]).
Thus lack of novelty was the sole ground for opposition to be examined.
Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.
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