G 0007/95 - Fresh grounds for opposition - #29

Citation rank: 29
No. of citations: 128

G 7/95 (and G 1/95) are concerned with the expression "grounds for opposition" ("motifs d’opposition", "Einspruchsgründe") and its meaning in the context of Art. 100 EPC.

Art. 100 EPC specifies the grounds under which a European patent can be opposed, namely:

"Art. 100 EPC - Opposition may only be filed on the grounds that:
   (a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
   (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
   (c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed."

As background, G 10/91 held that, in principle, the Opposition Division shall examine only such grounds for opposition, which have been properly submitted and substantiated in the notice of opposition. Only exceptionally, the Opposition Division may consider other grounds ("fresh grounds") for opposition, which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. Regarding the appeal proceedings, G 10/91 held that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

In the case underlying G 7/95, the opponent had initially attacked the patent only under inventive step. In appeal, the opponent-appellant then alleged lack of novelty over the closest prior art document previously used under inventive step.

The question thus arose whether an alleged lack of novelty is a "fresh ground" of opposition over the previously raised ground of lack of inventive step. If answered to the affirmative, a Board of Appeals could not examine the fresh ground without the consent of the proprietor (G 10/91). The answer is also not self-evident, because - after all - lack of novelty and lack of inventive step are both mentioned in the same paragraph/section of Art. 100, viz., Art. 100(a). Previous case law regarding that question had been divergent. The  corresponding question was thus referred to the Enlarged Board.

The Enlarged Board looked at the structure of Art. 100 (and of the related Art. 138 EPC). They stated that, while Art. 100(b) and (c) each related to a "single, separate and clearly delimited legal basis on which an opposition can be based" (4.2 of the resons), the same was not true for Art. 100(a). Art. 100(a). They stated:

4.3 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.

The ground of lack of novelty was thus seen as being separate and therefore "fresh" in view of the original ground of lack of inventive step. Therefore, following G 10/91, an appeal board could thus not examine this fresh ground as such.

However, the Enlarged Board observed that where is no novelty, there can also be no inventive step. Specifically, they stated:

7.2 Nevertheless, in a case such as that under consideration in the decision of referral in case G 7/95, if the closest prior art document destroys the novelty of the claimed subject- matter, such subject-matter obviously cannot involve an inventive step. Therefore, a finding of lack of novelty in such circumstances inevitably results in such subject-matter being unallowable on the ground of lack of inventive step.

Hence, although the ground of "lack of novelty" cannot be examined by a Board under that title, the Board can still use the same facts under the "lack of inventive step" title. 

The related G 1/95 was concerned with the question of whether the ground that claimed subject-matter is not an invention within the meaning of Article 52(1), (2) EPC is a "fresh ground" lack of novelty and inventive step. For the same reasons as G 7/95, the question was answered to the affirmative.

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Headnote:

In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.

The order of the decision can be found here. The reasons are the ones of G 1/95, which can be found here.

Quotes from decisions citing G 7/95 can be found here.