This decision deals with an allegedly late-filed ground for opposition.
*** Translation of the German original ***
[2.1] According to its own statements, the [opponent] has raised the ground for opposition pursuant to A 100(c) for the first time during the oral proceedings (OPs) before the Opposition Division (OD). However, this submission is not mentioned in the impugned decision or in the minutes of the OPs. The [opponent] has requested a correction of the minutes, but the OD has dismissed this request in its communication dated December 14, 2010. This communication shows that the OD was of the opinion that the [opponent] had neither made a “formal” request nor submitted detailed arguments supporting [the ground for opposition] and that it was for that reason that it decided to dismiss the request.
[2.2] According to the declaration in lieu of oath by Dr A. (D33), who had accompanied the professional representative to the OPs, “the request was dismissed by the chairman and the introduction of the ground for opposition into the proceedings was not admitted”. The representative of the [patent proprietor], who had also taken part in the OPs, has not contested that the [opponent] had raised the new ground for opposition. He only declared that he could not recall the details of the discussion.
[2.3] In view of this situation, considering the facts and the evidence, the Board of appeal has come to the conclusion that the ground for opposition pursuant to A 100(c) has been raised during the OPs but that the OD has exercised its discretional power pursuant to A 114(2) and decided not to admit this objection.
[2.4] The argument of the [patent proprietor] according to which it was not possible to introduce new grounds for opposition after the expiry of the time limit for filing an opposition is not in line with the established case law of the Boards of appeal (see G 9/91 [16]), according to which under certain circumstances the OD may, in application of A 114(1), consider a ground for opposition raised by the opponent after the expiry of the time limit for filing an opposition or even introduce a new ground of its own motion. It is true that in the present case the OD has not made use of this possibility, but this does not alter the fact that the new ground for opposition pursuant to A 100(c) was adduced during the opposition proceedings and, therefore, does not constitute a new ground that had been put forth for the first time during the appeal proceedings (cf. T 986/93 [2.4]).
[2.5] In its decision G 9/91 mentioned above the Enlarged Board of appeal has defined the conditions for an examination of grounds for opposition invoked after expiry of the time limit for filing an opposition by stating that there had to be prima facie relevant reasons for the grounds for opposition to be relevant and [that those reasons] would make it impossible to maintain the patent in its entirety or partly.
In the present case the amendment concerns a feature that is not disclosed in the original application as filed. The [opponent] has provided credible reasons […] that there is no support for this amendment in the application. The Board is of the opinion that the ground for opposition pursuant to A 100(c) to be prima facie very relevant.
The Board may take into account a ground for opposition which the OD has not admitted in application of A 114(2) if [the Board] is of the opinion that the OD has exercised its discretion wrongly (cf. T 986/93 [2.4] and T 620/08 [3.4]). In the present case neither the impugned decision nor the minutes of the OPs before the OD contain indications regarding the new ground for opposition or its dismissal, so that it is not clear according to which criteria the OD has exercised its discretion. The communication […] dismissing the requested correction of the minutes only refers to formal criteria such as a corresponding request or a lack of substantiation. It does not mention factual criteria that led to the dismissal of the new ground. Apparently the OD has not examined the question as to whether the new ground is to be considered prima facie relevant or not. Thus the decision of the OD not to take into account the new ground was not taken in a correct way.
In view of these circumstances and the fact that the Board considers the new ground for opposition to be prima facie very relevant, this ground is taken account of in the proceedings. For the sake of efficient proceedings and with the approval of the parties the Board has decided to decide itself on this ground within the framework of its powers under A 111(1).
As you might have guessed, the requests were found not to comply with A 100(c) / A 123(2) and the appeal was dismissed.
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