T 0222/85 - Notice of opposition must be sufficiently reasoned - #68

Citation rank: 68
No. of citations: 73

T 222/85 dealt the question of admissibility of an opposition, in particular the question how well the Grounds of Opposition must be explained in the Notice in order to comply with the requirement nowadays stated in Rule 76(2)(c) (then Rule 55(c) EPC1973) that the Notice is to contain "a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds".

The Board held that this requirement was only
satisfied if the contents of the notice of opposition were sufficient for the opponent's case
to be properly understood. The purpose of the requirement, in combination with the first two requirements of Rule 76(2), was to put the patentee and the opposition division in a situation where they knew what that case was about. They pointed out that, whereas the requirements of Rules 76(1) (a "written reasoned statement"), 76(2)(a) ("particulars of the opponent") and (b) ("number of the European patent") are merely formal in nature, the requirement of R. 76(2)(c) is a substantive requirement, which called for sufficient reasoning. A well-drafted opposition ought to contain reasoning that was full but concise. In general, the less reasoning that a notice of opposition contained, the greater the risk that it would be rejected as inadmissible.

The Board summarised the contents of the Notice of Opposition as follows:

' The notice of opposition sets out the following, under the heading "grounds": "The subject-matter of EP-5033, as defined in Claims 1 to 21 covers polyesters, coating compositions and paint compositions as currently described in the state of the art and/or applied in the field of art. The hydroxyl value, items (a) and (b), optional items (c) and (d), the weight percentages of cyclic moieties plus amide moieties, and the weight percentages of reactants with a functionality of 3 or more, as stated in Claim 1 of patent No. 5033 are quite conventional and generally known from the state of the art as represented by (for instance):" and there then followed a list of 16 prior published patent specifications. There then follows three paragraphs which allege that the feature of "high molecular weights" is an obvious aim, that methods of reaching high molecular weights are commonly known as disclosed for instance at two identified pages of a textbook, and that "according to opponent's measurements many known polyesters satisfy" the new parameter definition of molecular weight used in the opposed patent. Finally, it stated: "The polyesters, coating compositions and paint compositions as claimed in EP-5033 thus lack any novelty or inventive step, and are therefore not patentable in view of the articles of the EPC, in particular Articles 54 and 56." ' (point II of the Facts and Submission)

These Grounds were regarded insufficient and the opposition was held inadmissible. The corresponding appeal was thus rejected.

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Headnote 2:

2. The requirement under Rule 55(c) EPC [now R. 76(2)(c) EPC], that the notice of opposition shall, inter alia, contain "an indication of facts, evidence and arguments presented in support of the ground" is only satisfied if the contents of such notice are sufficient for the opponent's case to be properly understood on an objective basis.

The full text of the decision can be found here.

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.

T 0328/87 - Admissibility of opposition based on public prior use - #78

Citation rank: 78
No. of citations: 63

T 328/87 is concerned with the admissibility oppositions, which entirely rely on an alleged public prior use (Art. 100(a)). It defines the minimum amount of information, which has to be provided within the 9 months opposition period for the opposition to be admissible.

T 328/87 relied partly on the EPO Guidelines (nowadays GL G-IV, 7.2) and stated that the facts and evidence mentioned in Rule 55(c) EPC1973 (now Rule 76(2)(c)) as an admissibility criterion need to contain at least:

1. the the date on which the alleged use occurred, i.e. whether there was any instance of use before the relevant date (prior use);
2. what has been used, in order to determine the degree of similarity between the object used and the subject-matter of the European patent; and
3. all the circumstances relating to the use, in order to determine whether and to what extent it was made available to the public, as for example the place of use and the form of use. [...]. 

T 0291/00 referred to this as the „when, what and how“ criteria of T 328/87. Once the opposition is admissible, further evidence can be added, if needed.

In the opposition case underlying T 328/87 the opponent failed to submit within the opposition period any supporting evidence for the alleged manufacture and marketing in France of a top-loading washing-machine. Specifically, it lacked "any indication of evidence, such as sales catalogues, delivery notes, names and addresses of witnesses, etc." Consequently, the opposition was found inadmissible by the Board.

T 328/87 added that once an opposition is held inadmissible, there is no room for application of the principle of ex officio examination (Art. 114(1)). The reason for this being that there is in fact no procedure pending before the EPO to which the principle of ex officio examination could be applied (point 4 of the reasons).

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Headnote:

1. When an opposition is based on grounds of prior use, the requirements of Rule 55(c) EPC are only fulfilled if the notice of opposition indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use. The notice of opposition must also indicate the evidence and arguments presented in support of the grounds of opposition. However, Rule 55(c) EPC does not stipulate that the said facts, evidence and arguments have to be placed on file during the opposition period.
2. When an opposition has been declared inadmissible, its substance cannot be examined, nor is it possible for the EPO to examine the facts of its own motion in accordance with Article 114(1) EPC.