T 0570/14 - Opposing only some claims

Key points

• In the Notice of opposition, only claims 1-4 and 8-19 were opposed (also in Box V of Form 2300E).
• The Board finds that claims 5-7 as granted are therefore not opposed and the request directed to only these claims is allowed without examination by the Board. "Since no opposition proceedings are open against these claims, the obligation under point 19 of G 9/91 is not applicable, with the Board having no power to examine these claims."
• Claims 5-7 as granted were dependent claims. The Enlarged Board in G9/91 held that "However, even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which are depending on such an independent claim may also be examined as to patentability, [...]"
• The present Board adds that this "second sentence of the order of G 9/91 is not applicable to the present case because the claims intended to be opposed have been clearly specified."
• "Since in the present case the appellant/opponent expressly opposed claims 1 to 4 and 8 to 19, it follows that the above principle expressed by the Enlarged Board of Appeal does not give the Board the power to examine claims 5 to 7."

EPO T 0570/14 -  link

3. Extent of the opposition

The question of the extent of the opposition is important, since from a procedural point of view there would be no opposition proceedings open against non-opposed claims, with the consequence that the appellant/opponent, the Board and even the appellant/patent proprietor could not object to or amend these claims in any way.

The appellant/opponent considers that its statement in an accompanying letter to the notice of opposition filed on the same day and specifying that "John Gerard LEEMING, (...), hereby files Opposition to the above European Patent and requests that the patent be revoked in its entirety." was evidence enough that the patent as a whole was opposed. Also G 9/91 (order, second sentence) confirmed that as soon as an independent claim was opposed the dependent claims could be examined as well: "However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information."

The Board does not share the appellant/opponent's opinion. The basic principle to be applied is expressed by the Enlarged Board of Appeal in the first sentence of the order of G 9/91: "The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC." (emphasis added).

Hence, the Enlarged Board of Appeal made it clear that the extent mentioned in the notice of opposition pursuant to Rule 55(c) EPC 1973 or Rule 76(2)(c) EPC is the part of the patent which is opposed, and thus is the part on which the opposition division and, in case of an appeal, the board of appeal has the power to decide. There are no opposition proceedings open against the remaining part of the patent. In the present case, the extent clearly defined in the notice of opposition is claims 1 to 4 and 8 to 19 of the patent as granted. As can be seen under point II above, in Form 2300E under part V. the appellant/opponent had the option to cross the box "the patent as a whole" or specify which claims were opposed. This must be considered to be an expression of the appellant/opponent's intention. The appellant/opponent chose to limit its opposition to claims 1 to 4 and 8 to 19. This intention is confirmed in the notice of opposition since claims 5 to 7 are not mentioned once in the grounds, unlike all the other dependent claims, thus confirming what has been crossed on Form 2300E. Clearly, no clerical error was made, contrary to the appellant/opponent's assertion.

The statement in the accompanying letter or at the end of the notice of opposition that the patent should be revoked in its entirety does not change this finding.

In the European patent system, pursuant to Article 113(2) EPC, an opposition division (or a board) can only maintain a patent in a text submitted or agreed by the proprietor of the patent. This implies that an opposition division or a board cannot revoke a patent partially on its own motion if there is no request by the patent proprietor to that effect. In other words, even if only one claim were opposed, in the absence of a request by the patent proprietor for the patent to be maintained in amended form, the opposition division or the board would have to revoke the patent in its entirety. The statement at the end of the notice of opposition is, therefore, not in contradiction with the fact that not all claims have been opposed.

Furthermore, the second sentence of the order of G 9/91 is not applicable to the present case because the claims intended to be opposed have been clearly specified. This is explained by the Enlarged Board of Appeal under point 11 of the reasons: "11. It follows that the answer to the first question put to the Enlarged Board in case G 9/91 has to be affirmative. However, even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which are depending on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information (cf. T 293/88, OJ EPO 1992, 220). Such dependent subject-matters have to be considered as being implicitly covered by the statement under Rule 55(c) EPC (cf. paragraph 8 above)." (emphasis added)

Since in the present case the appellant/opponent expressly opposed claims 1 to 4 and 8 to 19, it follows that the above principle expressed by the Enlarged Board of Appeal does not give the Board the power to examine claims 5 to 7.

According to the appellant/opponent, it also made no sense to consider that the appellant/opponent did not wish to oppose a claim having exactly the same deficiency as claim 1, as was the case here since claims 5-7 did not overcome and eliminate the objection under Article 100(c) EPC. A prima facie analysis thus led the reader of the notice of opposition to understand that the appellant/opponent's intention could not have been to limit the objection under Article 100(c) EPC to claim 1.

As explained, since claims 5 to 7 are not covered by the extent of the opposition there are no opposition proceedings open against them, so the Board has no power to examine them even though they may prima facie be objected to for the same reasons. In the Board's opinion, and contrary to the appellant/opponent's opinion, as explained above, the appellant/opponent's intention was to not oppose claims 5 to 7. The appellant/opponent may have had different reasons for doing so and it is not the Board's duty to try and find out why the appellant/opponent made this choice; it is sufficient to note that the extent of the opposition is limited.

Therefore, the extent of the opposition is limited to claims 1 to 4 and 8 to 19.