No. of citations: 665
G 10/91 (in consolidated proceedings with G 9/01) is concerned with the character and nature of the opposition and opposition-appeal proceedings. Both G decisions defined powers of Opposition Divisions and Appeal Boards to examine the case. While G 9/91 was concerned with the question of which parts (i.e., which claims) of the contested patent may be examined, G 10/91 looked at the Grounds of Opposition, as provided in Art. 100(a)-(c) EPC, which may be considered by the Opposition Division or Board.
In the underlying case leading to the referral (T 580/89), only certain claims of the opposed patent were actually opposed (namely, under Art. 100(a) EPC). Other claims were not attacked. Also, no other Grounds of Opposition than Art. 100(a) was raised. Upon appeal, however, the opponent then also raised objections against the originally non-attacked claims. Furthermore, in the course of the appeal proceedings a third party filed observations under Art. 115 EPC, submitting that the subject-matter relating to all claims was not patentable due to lack of novelty and inventive step.
In this situation the the question arose whether the originally non-attacked claims may be examined by the Board, despite the fact that the original opposition did not concern these claims. The Board found that this the question was an important point of law within the meaning of Article 112(1)(a) EPC. It thus referred the following questions to the Enlarged Board of Appeal (reference number G 9/91):
1. Is the power of an Opposition Division or, by reason of Rule 66(1) EPC, of a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC dependent upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC?
2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?At that stage, the President of the EPO, making use of his power under Article 112(1)(b) EPC, referred the following question to the Enlarged Board of Appeal (reference number G 10/91):
Is the Opposition Division in the examination of the opposition obliged to consider all the grounds for opposition referred to in Article 100 EPC or is this examination restricted to the grounds referred to by the opponent in his statement of grounds of opposition?The Enlarged Board of Appeal considered that the questions referred by the Technical Board and by the President concerned related issues, and should therefore be treated in consolidated proceedings. Hence, the Facts and Submissions, as well as the Reasons for the Decision in G 9/91 and G 10/91 are the same. The orders of the respective decisions, however, relate to the specific questions referred to the Enlarged Board in the respective case.
In deciding case G 10/91, the Enlarged Board first noted that the questions referred to in G 9/91 and G 10/91 were, although related, in fact rather different: The question of which parts of the patent can be examined (G 9/91) concerned the formal competence of the Opposition Division/Appeal Boards to examine, whereas the question referred in G 10/91 related to the procedural principles applicable in the respective procedures (point 12 of the reasons).
Regarding the question which Grounds for Opposition may be examined (G 10/91), the case law was divergent. For example, in T 493/88 it was held that Art. 101 and 102 EPC1973 (now Art. 101 EPC) clearly referred to all Grounds for Opposition and does not limit the scope of examination by the Opposition Division. T 182/89, on the other hand, held that Art. 114 EPC (ex officio examination) should not be interpreted as requiring an Opposition Division or Appeal Board to examine Grounds of Opposition that were not raised by opponents within the 9 months opposition time limit.
The Enlarged Board found that the approach taken in T 182/89 was more in line with the concept of post-grant opposition proceedings, as present under the EPC. They also mentioned "procedural expediency" as a positive side effect (point 14 of the reasons). Ultimately, they decided that Opposition Divisions and Appeal Boards were not required to examine Grounds of Opposition not raised in the Notice of Oppostion.
A crucial point to be decided was, however, whether an Opposition Division/Board may examine such Grounds, i.e., whether Art. 114(1) EPC empowers an Opposition Division or Appeal Board to examine Grounds for Opposion not raised in the Notice of Opposition.
In this regard, the Enlarged Board noted that it was common practice before the EPC that the principle of ex officio examination also applied in opposition proceedings (point 16 of the reasons). This was also refleted in the traveaux preparatoires (BR 87/71, point 9). The Enlarged Board found that there was no reason to change the established practice. The current practice helped avoiding maintenance of patents in opposition which were invalid.
The Enlarged Board thus stated:
"[A]n Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99 (1) EPC. At the same time, the Enlarged Board would like to emphasise that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC, as an exception to the principle established by the Board in paragraph 6 above, should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent." (point 16 of the reasons)In appeal proceedings, this did not apply. The Enlarged Board stated that appeal proceedings were a judicial review procedure and thus less investigative by nature. Therefore, Art. 114(1) EPC (ex officio examination) should be applied in a more restrictive manner. Grounds of Opposition not raised in the initial Notice of Oppostion may not be examined by Appeal Boards. The Enlarged Board allowed one exception, however: "volenti non fit injuria" (latin: "to a willing person, injury is not done"). Hence, fresh Grounds may be examined by a Board in appeal proceedings, if the proprietor agrees. Otherwise, if the patentee does not agree to the introduction of a fresh ground for opposition, such a ground may not be dealt with in substance in the decision of the Board of Appeal at all. Only the fact that the question has been raised may be mentioned (point 18 of the reasons).
Finally, the Enlarged Board confirmed that the above restrictions to the examination of Grounds for Opposition only apply to the claims as granted. Any amendment introduced during the opposition or appeal proceedings must be fully examined as to its compatibility with the requirements of the EPC, e.g., also with regard to the provisions of Article 123(2) and (3) EPC (point 19 of the reasons).
Remark: See G 3/14 for examination of clarity objections in opposition and opposition-appeal proceedings. A brief summary of G 3/14 can be found here.
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Headnote:
1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC.
2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.
3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.The full text of G 10/91 can be found here.
Quotes from 10 decisions citing G 10/91 can be found here.
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