T 2155/17 - Fresh ground and claim amendment

Key points

•  In the course of the first instance opposition proceedings, a feature is added to claim 1. The opponent raises an objection of added subject-matter only in its Statement of grounds. The patentee objects that this is a fresh ground in appeal in the sense of G 9/91.
• The Board notes that the objection pertains to the amended part of claim 1, and that the amendment does not consist of combining granted claims, such that r.19 of G9/91 applies: “it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)” 
• The Board: “Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.” 
• The Board considers that the new objection is subject to the discretion under Art. 12(40 RPBA 2007 but does not hold the objection inadmissible. “No arguments were provided by the respondent why the Board should make use of this power and no reason can be found by the Board to hold this objection as inadmissible.”

EPO T 2155/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t172155eu1.html

1. Main request

1.1 Added subject-matter (I) raised in the statement of grounds of appeal

This objection related to the definition of the skin layer as including LLDPE and the absence of the expressions "multilayer film", "printable" and "adjoined to the core layer".

1.1.1 Admittance

The set of claims in question, which was submitted with the response to the notice of opposition as auxiliary request 5 and renumbered as auxiliary request 3 during the oral proceedings, is a set of claims amended in opposition by introducing an additional feature in claim 1 (that the skin layer includes LLDPE) which was not present in the granted claims, but allegedly can be found in the original description as submitted by the respondent.

The objection of added subject-matter relates to this amendment and not to the combination of features in the claims as granted. Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.

Consequently the ruling in section 18 of the Reasons of G 10/91, that a new ground of opposition can only be considered with the consent of the patent proprietor is not relevant and does not apply.

Instead section 19 of the Reasons of G 10/91 is relevant. This rules that in the case of amendments of the claims in the course of opposition or appeal proceedings, these are to be fully examined for compliance with the requirements of the EPC, Article 123(2) EPC being explicitly mentioned.

Consequently the Board is not prevented from examining the compliance of the claims as amended during the opposition procedure with, inter alia, this Article.

The objection was submitted in appeal with the statement of grounds of appeal and it is to be taken into account by the Board according to Article 12(4) RPBA 2007 (which applies in view of Article 25(2) RPBA 2020), unless the Board makes use of its power to hold it inadmissible. No arguments were provided by the respondent why the Board should make use of this power and no reason can be found by the Board to hold this objection as inadmissible.

The objection is therefore in the proceedings.