Tuesday, January 22, 2019 T 623/18 - On the quality of the arguments in the statement

Sufficiently substantiated?

In the present case, the notice of opposition was based on the grounds of opposition under Article 100(a) EPC, in combination with Articles 54 and 56 EPC, and Article 100(b) EPC. Several documents were mentioned, some of which were con­si­dered in more detail in the reasons relating to the ground for opposition under Article 100(a) EPC.

However, the opposition division followed the proprietor in finding that none of the grounds for opposition was sufficiently substantiated within the meaning of Rule 76(2)(c) EPC, and thus held the opposition inadmissible.

With respect to Art. 100(a) EPC, one of the reasons was that the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations.

The board disagrees with this conclusion. As summarized in reason 8, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition.

Friday, December 25, 2015 T 1112/12: is the amendment one of the types of amendments of G3/14?

In G3/14 the Enlarged Board of Appeal explained that during opposition no clarity objection can be raised for a number of specific types of amendments - in particular, if the amendments only relate to combining granted claims (or combining a granted claim with a portion of granted claim) or deleting alternatives from the granted claims, no clarity objections can be raised for clarity problems that were already in the granted claims because clarity is not a ground of opposition. In this case there was an amendment made by the patent proprietor and according to the opponent the amended claim lacked clarity. The clarity issue raised by the opponent was similar to a clarity issue raised by the Opposition Division. The Board concluded that this clarity problem was already in the granted claims. According to the Board of Appeal the amendment could be interpreted as deleting an alternative from the granted claim and, as such, the clarity objection is not allowed into this appeal procedure.
The interesting thing in this case is that the two alternatives are not defined as alternatives in the claims. According to the Board, the wording of a specific feature of the granted claims is such that only two alternatives fall within the scope of protection of that specific feature. One of the alternatives is excluded from the scope of protection in the amended claims. Subsequently this Board concludes that this is "deleting an alternative from the granted claims as meant by the Enlarged Board of Appeal in G3/14". Now I wonder whether I may conclude that: "By adding a disclaimer to a claim that excludes one of the alternatives that falls within the scope of protection of the granted claims, one prevents that the Opponent may raise clarity objections to your amended claim."?
Of course the reality of this case is a little bit more complex: during the opposition proceedings a not-supported-by-the-original-disclosure-objection was also raised against the now excluded / disclaimed alternative. 

Friday, June 20, 2014 T 2354/12 - A detour to decide on admissibility

A portion of the appeal decision relates to admissibility of late filed documents. Late filed document E6 is admissible because it seems prima facie relevant - this is often the route the Boards follow to decide on the admissibility of a late filed document. However, the admissibility of late file document E7 has not been discussed on basis of the content of the document, but mainly on basis of the what type of document E7 is. Document E7 is an Art. 54(3) EPC document (and has been submitted by the appellant in reply to the summons of oral proceedings). The Board decided on the admissibility of E7 by answering the subsequent question:  "If the document is admitted, does it raise a new ground of opposition?".  This appeal is filed by the opponent against a decision of the Opposition Division.


Citations from the decision:


[...]

Reasons for the Decision

[...]

Admissibility of documents E6 and E7

2. The teaching disclosed in document E6 seeks to make the configuration of a home network computer user friendly "by eliminating the need for any type of user interaction during the configuration process" and deals in particular with the automatic configuration of a computer.
Furthermore, as E6 appears, prima facie, to disclose a feature (ie. the automatic generation of a configuration request on the initial power-up) which according to the contested decision was not known from the documents then on file, its submission with the statement of grounds of appeal can be regarded as a justifiable reaction of the appellant to the findings of the opposition division.

2.1 Hence, despite the fact that E6 was filed only with the statement of grounds of appeal and thus had no part in the first instance proceedings, the Board, considering its relevance, has decided in favour of its admission into the appeal proceedings (Article 12(4) RPBA).

3. Document E7 is a European patent application which was filed before the filing data of the present application, but published after that date. As prior art within the meaning of Article 54(3) EPC, E7 can only be used to support a lack of novelty objection.

3.1 When filing the opposition, the opponent had indicated that the subject-matter of the patent in suit was not patentable under Article 100(a) EPC because of lack of novelty (Article 54 EPC) and lack of inventive step (Article 56 EPC). However, the lack of novelty objection was neither substantiated nor even referred to in the statement of grounds of opposition. This shows that the opponent had actually no reason to invoke Article 54 EPC as a ground for opposition. Lack of novelty was therefore never an issue before the opposition division and has to be regarded as a fresh ground for opposition raised only in the appeal proceedings.

3.2 As held by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ EPO 1993, 408, 420), if the patentee does not agree to the introduction of a fresh ground for opposition, such ground may not be dealt with in substance in the decision of the Board of Appeal at all. This conclusion was confirmed by the Enlarged Board of Appeal in its decision G 7/95 (OJ EPO 1996, 626) in which it was furthermore held that when a patent had been opposed under Article 100(a) EPC on the ground that the claims lacked an inventive step, the ground of lack of novelty was a fresh ground for opposition and accordingly could not be introduced into the appeal proceedings without the consent of the patent proprietor.
In the present case, the respondent did not consent to an examination of the novelty of the claimed subject-matter, since this issue had never been substantiated in the opposition proceedings and was in fact a fresh ground for opposition.

3.3 As document E7 would only be relevant for the assessment of the novelty of the claimed subject-matter and a fresh ground for opposition may not be dealt with by the Board without the consent of the proprietor, there is no reason to admit this late-filed document into the appeal proceedings.


[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T235412.20140429. The whole decision can be found here. The file wrapper can be found here.
Photo by Brian Rawson-Ketchum obtained from Flickr.