G 0010/91 - Examination of opposition-appeals - #2

Citation rank: 2
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.

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.

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.

T 0611/90 - Fresh case in appeal (allowed) - #85

Rank: 85
No. of citations: 60

The underlying opposition of appeal case T 611/90 was based on an alleged lack of novelty and inventive step vis-à-vis written state of the art. In the appeal, the appellant/opponent put forward grounds which were entirely based on a new line of attack, namely an alleged public prior use (Art. 54). The Board had to consider whether the appeal was admissible, since the factual grounds on which the patent was revoked by the opposition division were not addressed by the appellant in his statement of grounds of appeal.

The Board considered that the statement of grounds of appeal was still within the same legal and factual framework as the opposition proceedings (as considered necessary in decisions G 9/91 and G 10/91) since the fresh reasons presented in the statement of grounds of appeal (i.e., public prior use) were still within the same original ground for opposition (i.e., lack of novelty).

The Board, however, found it appropriate to refer the case back to first instance, because appeal proceedings should not become a mere continuation of first- instance proceedings.

In a somewhat similar case, T 1146/06 refers to T 0611/90 as follows:

"In the present case, the statement of grounds of appeal does not address in detail all the issues of the reasoning of the decision under appeal and the evidence on which that decision relies. Instead, it develops new arguments mainly based on document D5 filed for the first time on appeal. However, the arguments are based on the same grounds of opposition as those on which the opposition and the decision under appeal were based, namely lack of novelty and of inventive step. According to the established jurisprudence of the boards of appeal, an appeal based on a fresh case may be admissible when the grounds for opposition have remained the same (e.g. T 611/90, OJ EPO 1993, 50, Reasons, point 2; T 389/95, Reasons, point 1; T 708/95, Reasons, point 1.2; T 1029/05, Reasons, point 1.10; T 1082/05, Reasons, point 1.1 or T 1557/05, Reasons, point 1.2)." (T 1146/06, point 3.5 of the reasons)

In brief, grounds of appeal may be admissible despite the fact that they are based on entirely new lines of attack, as long as the new lines of attack remain under the same ground(s) of opposition in the sense of Art. 100(a), (b), (c) (and G 7/95). (In practice, however, it may still be safe to add a few lines relating to the attacks used in the original opposition, to avoid any discussion on the admissibility of the appeal.)

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Headnote:

1. Under Article 106(1) EPC, appeals lie from decisions rather than from the grounds of such decisions. Apart from other deficiencies, an appeal raising a case entirely different from that on which the decision under appeal was based is still admissible if it is based on the same opposition ground (point 2 of the Reasons).
2. If there is such an entirely different case, it may, subject to the other circumstances of the case, be inappropriate for an Appeal Board to deal itself with its allowability. The public's and the parties' interest in having the proceedings speedily concluded may then be overridden by the requirement that appeal proceedings should not become a mere continuation of first- instance proceedings (point 3 of the Reasons).
3. [...]

The full text of the decision can be found here.