Tuesday, 31 December 2013

T 1937/10 – Just A Question Of Strength

This decision –  on an appeal against the rejection of an opposition as inadmissible – reminds us that one has to distinguish between inadmissibility and unallowability.

[1.1] The notice of opposition is founded on the sole objection of lack of novelty against claim 1 of the contested patent, relying only on an alleged public prior use (D1 to D3) and a prior disclosure of that same device (D1, D3, D4). The inadmissibility of the opposition is based on the ground of insufficient substantiation, in particular with regard to the question of what has been actually disclosed […].

[1.2] The relevant requirements concerning substantiation of the opposition are set out in R 76(2)(c), according to which the notice of opposition shall contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds.

[1.3] It is clear from the EPO Form 2300 dated 28 November 2007 filed by the [opponent] that the opposition was filed against the patent as a whole (extent) and based on the grounds of A 100(a), namely lack of novelty and lack of inventive step (grounds). This is further confirmed by the notice of opposition itself. The first two conditions of R 76(2)(c) are therefore clearly fulfilled.

[1.4] With respect to the last condition (facts and evidence), according to the established case law the notice of opposition must indicate the “when”, “what” and under “what circumstances”, in particular “to whom”, the alleged public prior use was made available (T 522/94 [headnote IV, 10, 12, 20 to 25]; T 328/87 [3.3]).

[1.5] In the present case, the [opponent] cited documents D1 to D5 with its notice of opposition. D5 was merely cited for dependent claims, it is therefore not relevant for this decision. It indicated that a relevant device, as in D1, was made public to the attendees of a public seminar, i.e. to members of the public not bound by secrecy, held in Kemi, Finland on 23-34 March 1995 (circumstances and when). It filed D2 in this respect, constituted of a cover page, a programme page and a one page description of an AQS300 device with a picture and a drawing of this device.

The [opponent] argued in its notice of opposition that D1 discloses all the features of claim 1 except the features of the characterising portion. The latter features are alleged to be comprised in the device shown at the said seminar (what). D2 and D3 were filed as evidence to support this fact.

The same device was the subject of a prior disclosure in the article D4, showing the same picture as in D2. The photos D3 were filed as supporting evidence for this device as well.

In the light of these “what”, “when” and “what circumstances”, the [opponent] concluded that novelty of the subject-matter of claim 1 was not given.

[1.6] As indicated in T 597/07 [2.5] of the reasons, according to the established case law, “it is not required for an opposition to be admissible that the arguments brought in support are conclusive or that the opponent’s statements are true. What is required is that the patentee and the opposition division are put in a position of understanding clearly the nature of the objections and the evidence and arguments in support”.

It is further referred, for instance, to T 1022/99 [2.2] of the reasons, indicating that the facts - what, when, what circumstances of the alleged public prior use - must be indicated within the opposition period, while the evidence can be brought later in the proceedings as long as it is indicated.


[1.7] Therefore, a distinction must be made between examining admissibility of the opposition and its substantive merit (see Case Law, 7th edition 2013, chapter IV.D.3.3.3).

This distinction, contrary to the [patent proprietor’s] opinion, was not made in the impugned decision which appears to be focused only on assessing whether the [opponent’s] case of alleged prior use was conclusive and convincing.

[1.8] The [patent proprietor] holds the view that T 597/07 requires that the nature of the evidence is clearly understandable at the time when the opposition is filed and considers this element to be missing in the present case.

It argues that it is not unambiguously established that D2 and D3 are prior art documents. In particular, it is not clear whether page 3 of D2 actually belongs to D2 itself as there is no direct link between said page 3 and the first two pages (cover and programme of the seminar). With respect to D3, the pictures might have been taken on any device at any time and their link to the other documents D1, D2 or D4 merely relies on [opponent’s] allegations.

Even though the pictures look similar, the link between D2 and D4 is also missing and cannot be unambiguously established. Similarly, the link between D1 and D4 is unclear as there is no mention in D1 of the machine AQS300 of D4.

In fact, the notice of opposition merely alleges that D1 to D4 refer to the same device, without giving any evidence, however, how these documents are actually interrelated. The opposition relies on allegations without even indicating how these allegations could be proven.

Consequently, further investigations would be needed for the [patent proprietor] or the opposition division to clarify and understand the nature of evidence. That makes the opposition inadmissible.

[1.9] The Board cannot share the [patent proprietor’s] view for the reasons given during the oral proceedings and recited below.

The decision T 597/07 does not refer to the “nature of evidence” but rather to the evidence as such. The sentence quoted under point [1.6] above is to be understood as that the patentee and the opposition division are put in a position of understanding clearly:
  • the nature of the objections and
  • the evidence and
  • arguments
in support, i.e. meaning that the “nature” only relates to the objections, not to the evidence itself as argued by the [patent proprietor].

Furthermore, D1 (its translation D1a), D2, D3 and D4 (for its introductory part that has been translated and its pictures) are understandable documents, D1 and D4 being indisputable prior art documents as admitted by the [patent proprietor]. What the evidence is alleged to be proving is explained by the [opponent] in the notice of opposition (see also point [1.5] above), in particular with respect to the sole alleged distinguishing feature of the characterising part of claim 1 over D1. This characterising part reads as follows:
“at least some of said upper log-receiving surfaces (16) or of said leading edge regions (18) comprise a plurality of projections projecting therefrom, said projections comprising an outermost contact region for contacting logs being transferred between said spaced locations, said contact regions being configured as a peak”
In the notice of opposition the [opponent] argued that this feature could be seen in the picture contained in D2, which was further alleged to be clarified by the photos of D3, alleged to have been taken on the same device as shown in D2. The same argument was brought forward regarding the identical picture in D4, relating to the allegedly same installation as discussed at the seminar (D2). The relationship between these documents is therefore sufficiently discussed.

When reading the notice of opposition, the nature of the objections (lack of novelty), the evidence (D1 to D4) and the arguments (interrelation between D1-D4) in support, i.e. the case the opponent tries to make, is therefore clearly understandable for the Board.

Whether the device of D1 was actually the same as presented at the seminar (D2) or was actually the same as discussed in D4, i.e. whether the [opponent’s] statements in the notice of opposition are proven or not, does not relate to the admissibility of the opposition but rather to its substantive merit. The same applies to the question whether D2 is the complete document and whether the photos of D3 relate to the device of D2 or D4 as it was alleged.

An opposition can indeed be found admissible on the basis of the statements, documents or copies thereof indicated in/filed with the notice of opposition which, later in the opposition proceedings, may eventually be considered incomplete, insufficient or simply wrong.

This, however, does not put the admissibility of the opposition into question. It only relates to the strength of the case.

Doubting whether documents cited in the notice of opposition are actually what they are alleged to be, as in the present case by the [patent proprietor] and the impugned decision, is an issue of merit of the opponent’s case, not of its admissibility.

[1.10] In view of the above, the Board considers that the notice of opposition meets the requirements of R 76(2)(c). Consequently, the opposition is admissible.

The Board then remitted the case for further prosecution.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.