T 0842/12 - Abandoning and reintroducing grounds for opposition

EPO T 842/12

For the decision, click here

Key point

• Not making further oral submissions on a ground for opposition can be tricky, if in the minutes this is described as abandoning the objection.

2. Main request - Article 100(b) EPC

2.1 In its reply to the statement of grounds of appeal, the respondent raised an objection under Article 100(b) EPC, arguing that the feature of claim 1 that "the bypass conduit ... (is) provided between the pump and the longitudinal drilling fluid passage" is not described in the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

2.2 This issue also concerned claim 1 as granted.

2.3 Consideration of the objection in the appeal proceedings

The ground for opposition under Article 100(b) EPC had been raised and substantiated in the opposition notice. In the communication pursuant to Article 15(1) RPBA, the Board pointed to the fact that the minutes of the oral proceedings before the Opposition Division indicate that the respondent had abandoned all its objections under Article 100(b) EPC (see the minutes, page 2, paragraph 4, page 5, paragraph 2, page 7, paragraph 8 and page 8, paragraph 1).

In response, the respondent contested for the first time the correctness of the minutes and the interpretation by the Opposition Division of its declarations. The respondent submitted that, during the oral proceedings, it never renounced its challenge to the patent on the ground of Article 100(b) EPC. Rather, the respondent did not wish to make further oral submissions during the oral proceedings before the Opposition Division on this issue.

If the respondent was of the view that the minutes did not correspond to what has happened during the oral proceedings before the Opposition Division, a request for correction of the minutes should have been duly filed. In the absence of such a request and a subsequent decision of the Opposition Division to correct its minutes, the Board has to assume that they accurately reflect the course of the oral proceedings.

However, the Board takes the view that the withdrawal of a ground for opposition has to be explicit, unambiguous. In the present case, the Board agrees with the respondent that it cannot be inferred with certainty from the minutes that it did withdraw its ground for opposition under Article 100(b) EPC. Moreover, as acknowledged by the appellant, the re-introduction of the above objection under Article 100(b) EPC in the appeal proceedings does not give rise to any new or complex issue. The Board has also no reason to assume an abuse of procedure by the respondent.

Thus, the Board decided to take the respondent's objection under Article 100(b) EPC into consideration, under Article 114(2) EPC and Article 12(4) RPBA.

2.4 Merit of the objection

A skilled reader of claim 1 using common general knowledge would recognise at once that the bypass conduit, which "bypasses the longitudinal fluid passage", cannot at the same time be "provided between the pump and the longitudinal drilling fluid passage". From the wording of method claim 5 (see the before last method step), as well as the teaching in the description and drawings of the patent specification (see bypass conduit 7 in paragraph [0020] and Figures 1 to 3), it is clear that the disputed wording in claim 1 "that the bypass conduit and the three way valve are provided between the pump and the longitudinal drilling fluid passage" should read "that [deleted: the bypass conduit and] the three way valve are provided between the pump and the longitudinal drilling fluid passage".

The patent comprises a detailed description of a number of ways to carrying out the invention (see Figures 1 to 3), such that a skilled person would be able to perform the invention. Hence, the disclosure of the patent is sufficiently clear and complete within the meaning of Article 100(b) EPC.