G 0001/95 - Fresh grounds for opposition - #40

Citation rank: 40
No. of citations: 109

G 1/95 (and the related G 7/95) investigated what is to be understood under the expression "fresh grounds for opposition", as used in Headnote 3 of the earlier decision G 10/91,  which - according to the earlier G 10/91 - cannot be examined in opposition-appeal proceedings without the consent of the proprietor (G 10/91, Headnote 3).

In the opposition case underlying G 1/95, the referring Technical Board of Appeals noted that the patent had been opposed on the basis of Art. 100(a), but the opposition had been substantiated on the grounds of lack of novelty and inventive step (Art. 54, 56) only. The Technical Board, however, was of the opinion that the claims related to unpatentable subject matter in the sense of Art. 52(2), which is also mentioned as ground for opposition in Art. 100(a) EPC.

The question now arose, whether unpatentable subject matter is the same ground for opposition as lack of novelty and lack of inventive step (namely, "the ground for opposition of Art. 100(a) EPC"), or whether "unpatentable subject matter" must be seen as being an independent ground for opposition, which, according to G 10/91, could not be examined by an Appeal Board without the consent of the proprietor. Previously, the Technical Boards had taken different views on this question.

The Technical Board thus referred the following question to the Enlarged Board:

"In a case where a patent has been opposed on the basis of Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and inventive step pursuant to Articles 54 and 56 EPC, can a board of appeal introduce the ground that the subject-matter of the claims does not meet the conditions of Article 52(2) EPC of its own motion into the proceedings?"

The Enlarged Board noted in point 3.1 of the reasons that, according to established case law, the expression "grounds of appeal" is to be interpreted as including both the legal reasons, i.e., the legal basis, and the factual reasons, i.e., the facts, arguments and evidence relied upon to give to the board all the elements needed to decide whether or not the appealed decision has to be set aside.

Regarding Art. 100(a) EPC the Enlarged Board stated:

"Indeed, Article 100(a) EPC simply refers, apart from the general definition of patentable inventions according to Article 52(1) EPC, and the exceptions to patentability according to Article 53 EPC, to a number of definitions according to Articles 52(2) to (4) and 54 to 57 EPC, which specify "invention", "novelty", "inventive step" and "industrial application" which, when used together with Article 52(1) EPC, define specific requirements and therefore form separate grounds for opposition in the sense of separate legal objections or bases for opposition." (point 4.3 of the reasons)

They concluded that Art. 100(a) EPC contains a collection of different legal objections, or different grounds for opposition, and is thus not directed to a single ground for oppostion (point 4.6 of the reasons).

Therefore, in accordance with Headnote 3 of G 10/91, the ground for opposition of "unpatentable subject matter" was a fresh ground for opposition, which could not be examined by a Technical Board of Appeal, if the opposition had been substantiated only with respect to lack of novelty and lack of inventive step, unless the patentee agrees.

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Headnote:

In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Articles 52(1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.

The full text of the decision can be found here.

Quotes from 10 random decisions citing G 1/95 can be found here.