T 0328/87 - Admissibility of opposition based on public prior use - #78

Citation rank: 78
No. of citations: 63

T 328/87 is concerned with the admissibility oppositions, which entirely rely on an alleged public prior use (Art. 100(a)). It defines the minimum amount of information, which has to be provided within the 9 months opposition period for the opposition to be admissible.

T 328/87 relied partly on the EPO Guidelines (nowadays GL G-IV, 7.2) and stated that the facts and evidence mentioned in Rule 55(c) EPC1973 (now Rule 76(2)(c)) as an admissibility criterion need to contain at least:

1. the the date on which the alleged use occurred, i.e. whether there was any instance of use before the relevant date (prior use);
2. what has been used, in order to determine the degree of similarity between the object used and the subject-matter of the European patent; and
3. all the circumstances relating to the use, in order to determine whether and to what extent it was made available to the public, as for example the place of use and the form of use. [...]. 

T 0291/00 referred to this as the „when, what and how“ criteria of T 328/87. Once the opposition is admissible, further evidence can be added, if needed.

In the opposition case underlying T 328/87 the opponent failed to submit within the opposition period any supporting evidence for the alleged manufacture and marketing in France of a top-loading washing-machine. Specifically, it lacked "any indication of evidence, such as sales catalogues, delivery notes, names and addresses of witnesses, etc." Consequently, the opposition was found inadmissible by the Board.

T 328/87 added that once an opposition is held inadmissible, there is no room for application of the principle of ex officio examination (Art. 114(1)). The reason for this being that there is in fact no procedure pending before the EPO to which the principle of ex officio examination could be applied (point 4 of the reasons).

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Headnote:

1. When an opposition is based on grounds of prior use, the requirements of Rule 55(c) EPC are only fulfilled if the notice of opposition indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use. The notice of opposition must also indicate the evidence and arguments presented in support of the grounds of opposition. However, Rule 55(c) EPC does not stipulate that the said facts, evidence and arguments have to be placed on file during the opposition period.
2. When an opposition has been declared inadmissible, its substance cannot be examined, nor is it possible for the EPO to examine the facts of its own motion in accordance with Article 114(1) EPC.