Monday, 4 November 2013

T 1297/11 – Mind Your Words

Admissibility of the ground of lack of novelty

[2.1] In its notice of opposition, the opponent requested revocation of the patent as a whole under A 100(a) for lack of novelty and inventive step.

[2.2] It is stated in the minutes of the oral proceedings (OPs) before the opposition division (OD) that, at the start of the OPs, the OD asked the opponent “whether he would be further pursuing the novelty objection raised in the Notice of Opposition” and that “the Opponent replied that he was dropping his novelty objection, preferring to move immediately to the question of the presence of inventive step” […].

[2.3] The board considers that, by way of this declaration, the opponent expressly renounced its challenge to the patent on the ground of lack of novelty.

The ground of lack of novelty is thus a fresh ground of opposition which cannot be considered in the appeal proceedings, since the proprietor […] objected to its re-introduction (see G 10/91).

[2.4] The OD also understood this declaration to mean that the ground of lack of novelty was withdrawn, since the appealed decision is silent with respect to novelty. In fact, the OD held that the parties agreed that the subject-matter of claim 1 differed from A2 only in that the longitudinal was supported by the projections […].

[2.5] [The opponent] did not contest the correctness of the minutes but rather the above interpretation of its declaration. [The opponent] argued that its declaration just meant that, to shorten the OPs, the opponent had preferred to move directly to the question of inventive step and not to argue against novelty orally, whereby the opponent had reserved its right to present its novelty objection if need be. Thus, according to [the opponent], the above declaration was a conditional withdrawal of its novelty objection and not a binding withdrawal. In fact, the declaration being open to interpretation, the OD should have clarified whether or not the opponent abandoned the ground of lack of novelty.

This argument is not convincing. On its ordinary and plain reading the above declaration by the opponent made it clear that the opponent dropped, i.e. abandoned, its objection of lack of novelty. Thus, no further clarification was required by the OD.

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