T 0184/17 - Let's admit new grounds in appeal (exceptionally)

Key points

• In this opposition appeal, the Board decides that claim 1 is novel over E1. The opponent then would like to argue that even if E1 does not directly and unambiguously disclose the feature at issue, E1 at least makes the feature obvious. 
• "The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves [in E1], it anyhow lacks an inventive step." E1 describes a detailed process for making drinks and includes a general remark that the processes of E1 can be used for making coffee and tea.
• The patentee argues that inventive step is a new ground of opposition in appeal. "since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91".
• "In the present case, the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings."
• "The new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition [for novelty]"
•  "In conclusion, the board holds that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step can exceptionally be examined in the appeal proceedings without the agreement of the patentee, if it stays within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the present one, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked in appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same."
• As a comment, this decision appears to hollow out the holding of G10/91. Whatever the merits of G10/91 (I'm skeptical about that), I'm not sure if the approach of the present Board contributes to legal certainty for patentees. I doubt whether G10/91 envisaged Technical Boards creating exceptions to its holding. The fact that the Enlarged Board in G7/95 created an exception does not mean (in my view) that Technical Boards can create further exceptions as they deem necessary based on fairness. 
• In earlier decision T 597/07 cited by the Board, the inventive step attack was admitted not by way of exception but based on the Board holding that "the objection of lack of inventive step is not a fresh ground for opposition in the present case". 

EPO T 0184/17 - link

4. New ground of opposition

The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves, it anyhow lacks an inventive step. According to the respondent-opponent, the skilled person, drawing on the teachings of the invention in E1 already cited in the above novelty objection, would adapt as a matter of obviousness the cited process described on pages 29-33 for preparing a beverage from tea leaves in the sense of the contested claim.

The appellant-proprietor contests that the ground of inventive step was neither raised nor substantiated in the notice of appeal and thus constitutes a fresh ground for opposition. Since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91 (OJ 1993, 408 and 420).

4.1 In G9/91 and G10/91 (OJ 1993, 408 and 420) the Enlarged Board of Appeal held that Rule 76(2)(c) EPC has inter alia the function of establishing the legal and factual framework of the opposition including the grounds for opposition. In respect of fresh grounds of opposition, in decision G7/95 (OJ EPO 1996, 626) the Enlarged Board of Appeal held that lack of novelty and lack of inventive step, albeit both falling under Article 100(a) EPC, are different legal grounds for opposition. Moreover, according to decision G10/91 (OJ 1993, 408) a fresh ground for opposition (a ground neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings) may in principle not be introduced at the appeal stage. This more restrictive application of Article 114(1) EPC, as explained by the Enlarged Board, also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings and risking the revocation of the patent. An exception to this principle is justified in case the patentee agrees to its introduction: volenti non fit injuria, see point 18 of the reasons.

4.2 In the present case, the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings.

In appeal, the respondent-opponent for the first time advances the above inventive step objection. The new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Article 100(a) EPC for novelty.

This raises the question whether under such special circumstances, the new objection still falls under the principle as expressed in G10/91, or can be admitted into the appeal proceedings without the agreement of the patentee.

4.3 In this context, the board is mindful of the conclusions drawn in cases T 597/07, see reasons 5, and T 131/01 (OJ EPO, 2003, 115), see reasons 3.1, that in a case where a patent has been opposed on the ground of lack of novelty having regard to a prior art document, a specific substantiation of the ground of lack of inventive step is neither necessary nor generally possible without contradicting the reasoning presented in support of lack of inventive step. The reasoning in decision T 131/01 under point 3.1. reads as follows:

"Although in decision G 7/95 (supra) it was decided that the grounds of lack of novelty and lack of inventive step are two different grounds for opposition, this does not mean that there is no substantive connection between these two grounds, at least in a case in which the claimed invention is to be compared with the same relevant prior art document in both respects. If the claimed invention is not considered novel having regard to a prior document, it is not logically possible to assess whether this claimed invention is inventive having regard to this prior art. Substantiating a lack of inventive step objection in such a case necessarily involves looking at possible differences between the claimed subject-matter and the prior art document and would thus lead to the risk of two conflicting reasonings within the same notice of opposition, i.e. a first reasoning in support of lack of novelty where it is concluded that there is no difference and the further reasoning presented in support of lack of inventive step submitting that there are indeed some differences between the same claimed subject-matter and the same prior art document."

This reasoning was followed in the subsequent decision T 597/07 of 12 August 2009 in point 5 of the reasons:

"G 10/91 is silent on the issue of whether Article 100(a) EPC is to be considered as one single ground for opposition or whether the provisions of Articles 52 to 57 EPC mentioned therein are all different grounds for opposition (see also G 9/91; OJ EPO 1993, 408).
This question has been answered only in G 1/95 (OJ EPO, 1996, 615), the content of which corresponds essentially to G 7/95. Accordingly, an objection of lack of novelty which has not been substantiated in the notice of opposition cannot be introduced into the appeal proceedings without the agreement of the patentee since it is a different legal objection than the objection of lack of inventive step and, therefore, a fresh ground for opposition (point 7.1). However, it is also mentioned that in a case where 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 inventive step (point 7.2 of G 1/95).
The consequence of this latter statement is in the Board's opinion that if a patent has been opposed on the grounds of lack of novelty and lack of inventive step and if only the ground of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is not necessary.
The Board further concurs with the conclusion drawn in T 131/01 (OJ EPO, 2003, 115) that under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since - given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art - this would contradict the reasons in support of lack of novelty.
Therefore, the Board holds that the objection of lack of inventive step is not a fresh ground for opposition in the present case."

4.4 The board is aware that in the current case, the opponent in the notice of opposition had neither ticked the box concerning inventive step, nor in any other way specified this ground. The case in its factual aspects is thus not identical to the two cases cited previously where at least the box "inventive step" was ticked. In the board's opinion, this difference is not decisive. In the board's view what is decisive is that both lack of novelty and lack of inventive step are argued within the same factual and evidentiary framework, which means that the passages and teachings relied upon by the opponent for substantiating both objections as well as the main body of the argument are the same, but only the legal conclusions drawn therefrom differ. While in the present case in the cited passages the general applicability to beverages such as tea and coffee is mentioned, the specific example relied upon only refers to coffee. In these circumstances, the board takes the view that raising such an inventive step attack does not amount to a fresh ground of opposition against which the patent proprietor could object in the sense of G10/91 (supra).

4.5 Such an interpretation does not give rise to procedural uncertainty either, as most of the relevant arguments advanced against novelty are equally valid for the objection of lack of inventive step.

4.6 The board thus considers introducing an objection of lack of inventive step at this stage of the procedure as covered by the underlying principle in G10/91 (OJ 1993, 408) that the notice of opposition should provide legal certainty to the patentee by determining the factual and evidentiary framework on which the patent is opposed.

4.7 The Board notes that decisions T 1029/14 and T 448/03, cited by the appellant-proprietor, did not assess whether the new inventive step objections, though relying as starting point on the same document as the novelty objection, modified the original evidentiary and factual framework, e.g. by requiring further teachings or evidence. Thus, the reasoning in those decisions has no bearing in the present case. Otherwise, the board agrees with the conclusions in the cited decisions that a fresh ground of inventive step cannot, as a general principle, be introduced into the appeal proceedings without the consent of the patentee.

The appellant-proprietor also cites decisions T 708/12 and T 1738/11 that also have no bearing on the present case, as these did not involve the ground of inventive step, but of novelty.

4.8 In conclusion, the board holds that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step can exceptionally be examined in the appeal proceedings without the agreement of the patentee, if it stays within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the present one, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked in appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same.

4.9 In the case under consideration, the respondent-opponent for the objection of lack of inventive step relies on the same particular embodiment of E1, namely the embodiment described on pages 29-33, as in the novelty objection and also on the same general teachings of the invention on pages 9-15 of E1, that were cited in support of the allegation that such an embodiment constitutes also a disclosure of a process for brewing tea in the sense of the contested claim 1. The board thus concludes that the new objection is within the original factual and evidentiary framework established by the notice of opposition. Therefore, according to the above conclusions, it can be examined by the board without the agreement of the appellant-proprietor.

4.10 The board therefore decides to admit the raised inventive step objection into the appeal proceedings, Article 114(1) EPC.