Monday, November 19, 2018 T 839/14 - Fresh ground before opposition division

Fresh ground

In the written submissions before oral proceedings in first instance opposition, the opponent argued for the first time that the granted patent contained added subject matter. The opposition division refused to allow the new grounds to be added in the proceedings,as it didn't consider it to be prima facie relevant. The decision does contain argumentation though, why the division did not consider there to be added subject matter. The board concurs with the decision not to allow the new ground. Accordingly, the argumentation regarding the added matter which is in the opposition divisions decision is not reviewed by the Board. 

Reasons for the Decision

1. The appeal is admissible

2. Oral submissions by an accompanying person

The Appellant-Proprietor formally objects to the decision of the opposition division to hear submissions by Mr Schulz during the oral proceedings. However, Appellant-Proprietor has not presented any specific request in relation to this question. In particular they have not argued that this would represent a procedural violation, much less that it would be substantial in the sense that it had an adverse effect for the Appellant Proprietor that marred the entire procedure, nor is this apparent to the Board Absent any specific request or substantiating argument, the Board sees no need to decide on the issue.

3. Fresh ground for opposition

3.1 The opposition ground under Art 100c) was submitted on the first time on 15 October 2013 one month before the oral proceedings and after the opposition period laid down in Art. 99(1) EPC. Having considered its prima facie relevance, the opposition division decided not to allow this late ground in the proceedings.

3.2 It is established case law that if the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in appeal, it is not the function of a Board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as the department of first instance. A Board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the Board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal IV.E.3.6, eighth edition 2016).

3.3 The Board observes that in its examination of the prima facie relevance the opposition division identified the basis for these amendments and their validity at first sight, see the detailed explanation in point 19.4 of the impugned decision. The Appellant-Opponent submits that the opposition division made a manifest error because it failed to identify that a seal to ensure tightness between the piston and cylinder was not disclosed in relation with a dish seal, and would in fact be incompatible with the second embodiment. In the Board's view this argument attempts to enter into a full discussion of the merits of the appellant-Opponent's case regarding added subject-matter, rather than demonstrating that the opposition division made a manifest error in its evaluation of prima facie relevance of the ground. Nor is it apparent to the Board from the opposition division's reasoning that its assessment of prima facie relevance would be manifestly wrong.

3.4 From the minutes, page 1, bottom half, and page 2, first paragraph, it appears that the opposition division otherwise heard the parties on prima facie relevance of the new ground before taking its decision. It thus applied the correct criterion (prima facie relevance) and heard the parties. Therefore, the Board concludes that the opposition division correctly exercised its discretionary power by checking at first sight whether this new ground was relevant in that it prejudiced maintenance of the patent as granted. The Board therefore sees no compelling reason to overturn the division's discretionary decision regarding the non admission of a new opposition ground based on Art 100c) EPC filed at a late stage of the opposition procedure.

This decision T 0839/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T083914.20180914. The file wrapper can be found here. Photo by Goumbik obtained via Pixabay under CC0 license (no changes made).