T 0182/89 - Sufficiency of disclosure - Examination of all grounds of opposition by OD - #72

Citation rank: 72
No. of citations: 66

In T 182/89 the opponent opposed the patent under Art. 100(a) (inventive step) and Art. 100(b) (sufficiency of disclosure). The ground of Art. 100(b) was based on experiments done by the opponent, in which they tried to reproduce the invention, but failed.

In the first instance, the opposition division (OD) decided at oral proceedings that the invention was insufficiently disclosed and revoked the patent under Art. 100(b), without commenting on Art. 100(a). The patentee appealed.

1. Sufficiency - burden of proof
Upon reviewing the arguments under sufficiency, the Board found that they were so weak that - had the ground of sufficiency of disclosure been the sole ground asserted against the patent - the opposition would have been inadmissible. It would have failed to provide substantiated grounds for opposition, as required by R. 55(c) EPC1973 (now R. 76(2) EPC2000). The Board pointed out that, if the ground of insufficiency of disclosure is put forward by an opponent, it is upon him to show that the disclosure of the invention is indeed insufficient (reference was made to T 182/89 in this regard).

2. Examination of all grounds of opposition
In the case at hand, the opponent's main line of attack was the one under inventive step. The ground of sufficiency was merely an add-on, and not really pursued in appeal. In this situation, the Board criticised the OD for having only decided on sufficiency, and for not having dealt with the ground of lack of inventive step. The Board stated:

"3.1 In the present case, the Board can see no justification for the Opposition Division not having decided the question of inventive step at the oral proceedings before it, this being the only ground on which in reality both Opponents intended to rely. While there may be cases in which it is sensible for an Opposition Division only to decide upon one of several grounds of opposition which have been alleged, and to say nothing in its decision about the other grounds of opposition which were alleged, in the Board's view the circumstances of the present case as set out above make it plain that this is not such a case."

Comment:
Some of the points made in T 182/89 regarding the opposition procedure were taken up and mostly confirmed by G 9/91 ("Power to examine") and G 10/91 ("Examination of opposition-appeals"). Nowadays, the latter two decisions should be consulted regarding the nature and principles of the opposition procedure.

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Headnotes:

I. In order to establish insufficiency, the burden of proof is upon an opponent to establish on the balance of probabilities that a skilled reader of the patent using his common general knowledge would be unable to carry out the invention. A mere statement that one of several examples in a patent has been repeated once "exactly as described" without obtaining exactly the results claimed in the patent is in principle inadequate to discharge that burden (Decisions T 292/85 (OJ EPO 1989, 275) and 281/86 (OJ EPO 1989, 202) followed).
II. 1. The purpose underlying the relevant provisions of the EPC requires that an Opposition Division should normally decide at the same time all grounds of opposition which have been both alleged and supported (as required by Rule 55(c) EPC) in the notice of opposition; and that it should not decide potential grounds of opposition which have not been alleged in the notice of opposition.
2. If a notice of opposition contains allegations as to grounds of opposition which are not supported as required by Rule 55(c) EPC, such allegations in principle should be rejected on the same basis as if they were inadmissible under Rule 56(1) EPC.
3. In principle, Article 114(1) EPC should not be interpreted as requiring the Opposition Division or a Board of Appeal to investigate whether support exists for grounds of opposition which have not been properly supported by an Opponent, but should be interpreted as enabling the EPO to investigate fully the grounds of opposition which have been both alleged and properly supported as required by Rule 55(c) EPC.

The full text of the decision can be accessed here.