T 1969/17 - Fresh ground of opposition

Key points

• “Since the ground for opposition pursuant to Article 100(c) EPC was not admitted into the proceedings by the opposition division, it constitutes a fresh ground for opposition within the present appeal proceedings as well. Its introduction therefore requires the consent of the proprietor/respondent (see G 9/91 and G 10/91, Reasons 18). As the respondent does not consent, this ground is not admitted into the proceedings.”
• “it is noted that, according to T 986/93 (Reasons 2.4) and T 620/08 (Reasons 3.4), a board of appeal is at least not barred from considering a late-filed ground for opposition which has been disregarded by the opposition division if it is of the opinion that the opposition division exercised its discretion wrongly in this respect. Similarly, in T 22/15 (Reasons 3.2 to 3.5) it was held that, if the respective reasoning in the impugned decision does not comply with R[Rule 111(2) EPC 2000], considering the late-filed ground for opposition in the appeal proceedings lies in the discretion of the board and depends on whether it is prima facie relevant for the maintenance of the patent.”
• “The ground for opposition concerning inventive step was never raised in the proceedings before the opposition division. It is also to be noted that the alleged lack of inventive step is not based on D1 as the closest prior art, the sole document relied upon in the proceedings before the opposition division. Therefore, this ground of opposition is a fresh one in the appeal proceedings (see also T 448/03, Reasons 5.1 and 5.2). Moreover, the lack of inventive step was not argued within the same factual and evidentiary framework as the novelty objection (see also T 184/17, Reasons 4). The respondent does not agree to its introduction into the appeal proceedings (see G 9/91 and G 10/91, Reasons 18). Thus, this ground is not admitted into the proceedings.”

EPO T 1969/17 -  link

Reasons for the Decision

1. Ground for opposition pursuant to Article 100(c) EPC


1.1 This ground was raised for the first time at the oral proceedings before the opposition division. It was thus at the discretion of the opposition division to admit it. The standard to be applied in such a case is whether the fresh ground prima facie prejudices the maintenance of the patent (G 9/91 and G 10/91, Reasons 16). To the dismay of the board, and as correctly pointed out by the appellant, the decision's reasoning with respect to the non-admittance of this fresh ground (page 6, second paragraph of the decision) is rather short, to say the least.


However, as can be seen from the minutes of the oral proceedings before the opposition division, the appellant as well as the respondent were heard concerning this issue (see the minutes of the oral proceedings before the opposition division, item 1.4). Furthermore, it is clear from the written decision and the minutes that the appellant considered the feature "average cooling rate >=3**(o)C/s to cooling stop temperature" not to be disclosed in the application documents as originally filed, and that the respondent had pointed to paragraph [0029] for support of this feature. It is clear - at least on a prima facie level - that in paragraph [0029] of the application documents as published the "average cooling rate" to cool to the "cooling stop temperature" or "target temperature" is disclosed to be "at least >=3**(o)C/s". Thus, the opposition division concluded that the appellant's submissions with respect to the fresh ground for opposition pursuant to Article 100(c) EPC prima facie did not prejudice the maintenance of the patent as granted. Therefore, although it did not give an explicit explanation for not admitting this ground into the proceedings, it is evident that the opposition division applied the correct standard and, thus, correctly exercised its discretion.

1.2 Since the ground for opposition pursuant to Article 100(c) EPC was not admitted into the proceedings by the opposition division, it constitutes a fresh ground for opposition within the present appeal proceedings as well. Its introduction therefore requires the consent of the proprietor/respondent (see G 9/91 and G 10/91, Reasons 18). As the respondent does not consent, this ground is not admitted into the proceedings.


1.3 For the sake of completeness, it is noted that, according to T 986/93 (Reasons 2.4) and T 620/08 (Reasons 3.4), a board of appeal is at least not barred from considering a late-filed ground for opposition which has been disregarded by the opposition division if it is of the opinion that the opposition division exercised its discretion wrongly in this respect. Similarly, in T 22/15 (Reasons 3.2 to 3.5) it was held that, if the respective reasoning in the impugned decision does not comply with Rule 68(2) EPC 1973 (Rule 111(2) EPC), considering the late-filed ground for opposition in the appeal proceedings lies in the discretion of the board and depends on whether it is prima facie relevant for the maintenance of the patent.


But even when applying this standard, the board arrives at the same conclusion as the opposition division, namely that the ground for opposition pursuant to Article 100(c) EPC prima facie does not prejudice the maintenance of the patent as granted. The reasons are as follows.


Paragraph [0029] uncontestedly discloses the cooling rate to the first temperature region to be at least 3**(o)C/s. Moreover, in this paragraph, like in claim 1 as originally filed, it is stated that the cooling stop temperature is the target temperature which is set within the first temperature region. From this passage, it is clear - at least on a prima facie basis - that the cooling stop temperature, i.e. the temperature to which cooling is performed, lies in the first temperature region and, thus, the cooling rate "to the first temperature region" is the cooling rate until the target temperature, i.e. the cooling stop temperature, is reached. Thus, the contentious feature is prima facie directly and unambiguously derivable from paragraph [0029] of the application documents as filed.


1.4 For the above reasons, the ground for opposition pursuant to Article 100(c) EPC is not admitted.


[...]


3.3 For the above reasons, the subject-matter of claim 1 is new. The ground for opposition pursuant to Article 100(a) in combination with Articles 52(1) and 54(1),(2) EPC does not prejudice the maintenance of the patent.


4. Inventive step


4.1 The appellant submits that there was lack of inventive step when considering the evidence filed with the grounds of appeal.


The ground for opposition concerning inventive step was never raised in the proceedings before the opposition division. It is also to be noted that the alleged lack of inventive step is not based on D1 as the closest prior art, the sole document relied upon in the proceedings before the opposition division. Therefore, this ground of opposition is a fresh one in the appeal proceedings (see also T 448/03, Reasons 5.1 and 5.2). Moreover, the lack of inventive step was not argued within the same factual and evidentiary framework as the novelty objection (see also T 184/17, Reasons 4). The respondent does not agree to its introduction into the appeal proceedings (see G 9/91 and G 10/91, Reasons 18).


4.2 Thus, this ground is not admitted into the proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.