Key points
- The opponent appealed (in 2019), basing the appeal only on new attacks. The Board concludes that even if all attacks are inadmissible under Art. 12 RPBA 2007, this does not make the appeal inadmissible.
- " The board observes that the respondent [proprietor] did not present any formal legal basis for its argument that the new and arguably inadmissible attack directly leads to inadmissibility of the appeal. The board is not convinced that, apart from the factual basis, the argument is correct in law. The board is not aware of any legal provision, either in the EPC or in the RPBA, that would stipulate inadmissibility of the appeal as the legal consequence where no attacks remain in the appeal as a result of their non-admission. Nor is this supported by the case law. "
- " The fact that attacks presented in the appeal may not be admitted in the course of examination of the appeal does not lead to the (retroactive) finding that the appeal was not reasoned (and hence inadmissible), but at most to the dismissal of the appeal. Whether the reasons are suitable for achieving the purpose of the appeal is a question of allowability and not admissibility, at least as long as such reasons are not manifestly insufficient or irrelevant. The board's possible finding on the non-admittance of the attack is based on the board's discretionary powers. By contrast, the usual admissibility conditions of an appeal are stipulated by specific legal provisions, normally requiring that the board examine these conditions ex officio. The board's finding on the admissibility of the appeal is not a discretionary decision, but follows directly from the letter of the law. However, this question need not be decided in the present case, as the board refrained from not admitting the argued new attack, as set out below."
- The observations of the Board are obiter as the new attack is admitted into the procedure.
- Regarding the admissibility of the opposition, one prior art document (D2) was identified in the Notice with an incorrect publication number. The Board confirms the decision of the OD that this error does not render the opposition inadmissible. This issue is unclear because, on p.9 of the Notice, one attack is lack of inventive step over a public prior use with D2 or D3. There is no such thing as the partial inadmissibility of a Notice of opposition, so at least the alternative document D3 should make the issue moot.
- The headnote of the decision is about this issue.
- The Notice was filed by fax in 2016, and patent publication D2 was not attached to it.
- The appeal is dismissed after examination of the substantive grounds.
1. Admissibility of the appeal, admission of the new line of attack into the appeal proceedings
1.1 The major part of the usual formal requirements for the existence and admissibility of the appeal (fee, time limit, adversely affected party, etc.) were undisputed, and the board is satisfied that these requirements were met.
1.2 According to the respondent, the appellant had based its appeal exclusively on new arguments and new attacks that had not been presented during the first-instance proceedings, either in writing or during the oral proceedings, and that had therefore also not been considered in the decision under appeal. These arguments were late-filed. Accordingly, the appeal - including only late-filed arguments and attacks - was to be rejected as inadmissible.
Document E2 was interpreted differently in the statement setting out the grounds of appeal from its interpretation during the opposition procedure. In particular, the "first aperture" was equated with the opening 44 ("Druckstufenblende 44", "Öffnung 41") of E2 during the opposition proceedings. In contrast, in the statement setting out the grounds of appeal, the "first aperture" was equated with the opening 77 of detector 74 in E2. The "first detector device" was equated with detector 91 of E2, and not with detector 74, contrary to the view of the opposition division. To support this argument, the appellant submitted a new document (page 33 of the Dictionary of Microscopy). For these reasons, this new interpretation of E2 corresponded to a new line of argument.
As a consequence, features c1, e, f1 and f2 were mapped to completely new features of document E2, so that a wholly fresh case was presented on appeal. The new line of argument was also not prima facie relevant.
In addition, the respondent submitted that no reasons had been provided as to why this new line of argument had been presented now and not earlier, during the opposition proceedings.
Finally, the respondent submitted that the new line of argument was actually an objection concerning novelty and not an objection concerning inventive step.
Since inventive step was the only ground of opposition raised during the opposition proceedings, the newly-raised objection, even if presented as being a lack of inventive step, concerned novelty and consequently presented a new ground which should not be admitted into the proceedings.
1.3 The appellant pointed out that document E2 had been discussed throughout the opposition proceedings. The interpretation that detector 74 of figure 8 in E2 was a first aperture within the meaning of feature f1 was a reaction to the impugned decision, namely the opposition division's conclusion that detector 91 of figure 8 could not be the first detector within the meaning of feature d1.
1.4 The board observes that the respondent did not present any formal legal basis for its argument that the new and arguably inadmissible attack directly leads to inadmissibility of the appeal. The board is not convinced that, apart from the factual basis, the argument is correct in law. The board is not aware of any legal provision, either in the EPC or in the RPBA, that would stipulate inadmissibility of the appeal as the legal consequence where no attacks remain in the appeal as a result of their non-admission. Nor is this supported by the case law. The fact that attacks presented in the appeal may not be admitted in the course of examination of the appeal does not lead to the (retroactive) finding that the appeal was not reasoned (and hence inadmissible), but at most to the dismissal of the appeal. Whether the reasons are suitable for achieving the purpose of the appeal is a question of allowability and not admissibility, at least as long as such reasons are not manifestly insufficient or irrelevant. The board's possible finding on the non-admittance of the attack is based on the board's discretionary powers. By contrast, the usual admissibility conditions of an appeal are stipulated by specific legal provisions, normally requiring that the board examine these conditions ex officio. The board's finding on the admissibility of the appeal is not a discretionary decision, but follows directly from the letter of the law. However, this question need not be decided in the present case, as the board refrained from not admitting the argued new attack, as set out below.
1.5 The board holds that the appellant had not based its appeal on a different (new) ground for opposition. In the statement setting out the grounds of appeal, the appellant raised the ground of lack of inventive step and not of lack of novelty, in line with the opposition procedure. Although it seems that the objection made is in substance comparable to a novelty objection, the appellant did not formally raise a new ground. The appeal can thus not be dismissed on that basis (see also Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.2.6.4 a)).
According to Article 12(4) RPBA 2007, which is applicable in view of Article 25(2) RPBA 2020, without prejudice to the power of the board to hold inadmissible facts, evidence or requests which could have been presented in the first-instance proceedings, everything presented by the parties under Article 12(1) RPBA 2007 shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA 2007.
The board is of the view that the line of argument presented by the appellant for the first time in the statement setting out the grounds of appeal is prima facie relevant to the outcome of the appeal, contrary to the respondent's submission.
Furthermore, it is based on the same evidence that was considered, during the opposition proceedings, as representing the closest state of the art, namely document E2. That is, neither the ground for opposition nor the evidence has changed. The fact that the appellant interprets document E2 in its statement setting out the grounds of appeal differently from the way it was interpreted in the opposition proceedings is not sufficient to consider the new line of argument as being late-filed. On the contrary, the allegation of lack of novelty in view of the closest prior-art document E2 can be considered in the context of deciding upon the ground of lack of inventive step as set out in decision G 7/95, OJ 1996, 626, Headnote.
The appellant in its statement setting out the grounds of appeal presents a discussion concerning the interpretation of detector 91 of E2 in the context of the claim. The opposition division was of the opinion that detector 91 could not be referred to as the "first detector device", and the appellant responded thereon. The new line of argument is thus a direct response to the decision of the opposition division.
For the reasons set out above, the board sees no reason to hold inadmissible (Article 12(4) RPBA 2007) the appellant's line of argument with respect to E2. It is thus part of the proceedings and must be taken into account by the board.
In view of the above, the board also sees no reason to hold the appeal inadmissible on the basis of the respondent's own argument, quite apart from the board's observations made in point 1.4 above.
2. Admissibility of the opposition
2.1 The opposition division held that the opposition was admissible and, in particular, that the requirements of Rule 76(2)(c) EPC were met.
In the notice of opposition, document E2 was indicated by a number (EP1068360) and a name ("Essers"). From the reasoning in the notice of opposition, it was apparent beyond any doubt that E2 concerned a scanning electron microscope. EP1068360, i.e. E2, as indicated in the notice of opposition, concerned a method and device for quantifying DNA and RNA. This was immediately apparent as an error, the subject-matter concerning quantification of DNA being too far away from scanning electron microscopes.
For the opposition division it was decisive that the proprietor was in a position to retrieve the correct publication number of E2 in a patent database by using the name "Essers" as the name of the inventor of E2 and a database query such as "scanning electron microscope", and thus without needing to undertake further investigations.
The opposition division also cited decision T 344/88, in which it had been concluded that it would be taking formal requirements too far to reject the opposition simply because the wrong number had been given for a cited patent specification.
Based on these findings, the opposition division accepted the correction according to Rule 139 EPC and did not qualify the opposition as inadmissible.
2.2 The respondent disagreed, and maintained its view that the opposition was insufficiently substantiated and, therefore, inadmissible, without explicitly stating what should be the legal consequence if the board were to accept the respondent's argument. However, based on the procedural situation leading to the appeal, namely the rejection of the opposition by the division, the logical consequence of the argued inadmissible opposition can only be the dismissal of the opponent's appeal. Thus the board takes it from the respondent's submissions that this argument is provided in support of the requested dismissal of the appeal.
2.3 The respondent argued as follows:
According to Rule 76(2)(c) EPC, a notice of opposition should contain the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds. The content of the statement of grounds must be such as to enable the patent proprietor and the opposition division to examine the alleged ground for revocation without recourse to independent enquiries.
Document E2 was referenced with the publication number EP 1 068 360 (instead of EP 1 068 630), which related to a document presenting a method for quantifying DNA. Therefore the proprietor could not form any opinion or judgement on the facts presented. The line of argument based on document E2 consequently missed its goal, rendering the opposition unsubstantiated, contrary to the requirements of Rule 76(2)(c) EPC.
The respondent further did not share the opposition division's view that E2 could be directly identified without recourse to independent enquiries and further investigations. From the incorrect publication number and the name "Essers" it was not possible to identify the correct publication number of E2 using e. g. Espacenet. When trying to do so, the respondent found 378 results. Unacceptable independent enquiries and further investigations would therefore have been necessary to enable the proprietor to understand the objections raised. The mere specification of a name could not be sufficient to provide the evidence required for a substantiated opposition.
During the oral proceedings before the board, the respondent stated that decision T 344/88, page 8, second paragraph, last sentence held that, for an admissible opposition, the opposition division should have been able to identify the correct publication number within the nine-month period according to Article 99(1) EPC. This would not have been possible in the present case, because the notice of opposition was filed on the last day of said nine-month period.
2.4 The appellant agreed with the opposition division that the correct publication number of E2 was retrievable without undue effort by the opposition division, the respondent or the board.
2.5 The board shares the opposition division's opinion concerning the erroneous citation of document E2, and refers in this context to decision T 344/88 (Reasons for the decision, point 6.).
2.5.1 The board observes that Rule 76(2)(c) EPC merely requires an indication of the facts and evidence presented in support of the argued grounds for opposition, but that not necessarily every piece of evidence need already be presented along with the notice of opposition. Clearly, an offered witness testimony can inevitably be given only after the filing of the notice in which the particulars of the witness are indicated. However, the effective evidence will be available to the division only later. On that basis, it should also be sufficient if the indications given in the notice of opposition permit the substantive content of the evidence offered to be established only at a later stage, provided that this substantive content can be established without undue effort and still within a reasonable time, e. g. in good time for the preparations of the division for oral proceedings or the like. Witness evidence is regularly only available at the oral proceedings.
2.5.2 In the present case, the notice of opposition stated that the subject-matter was not new and/or inventive in view of a European patent, and detailed reasons were provided, making it at least plausible that such a patent indeed existed, and was not merely a phantom or imaginary document. The description of the citation was sufficiently detailed in the notice of opposition that the proprietor and the opposition division could clearly identify the document from the available material on the basis of the information provided by the opponent. For example, section 1.2 of the notice of opposition provides a detailed description of the content of E2. Contrary to the respondent's submission, the board finds that a search in Espacenet using "Essers" as applicant and either the class of the patent in suit "H01J37" in the field "CPC" or the word "microscope" in the field "title" provides document E2 as the first or second result, respectively.
2.5.3 Hence the correct document E2 is easily selected from Espacenet without excessive investigations using the expression "Essers" and the additional information that E2 deals with an "electron microscope" (or even simply a "microscope").
2.5.4 Therefore the facts and evidence submitted in accordance with Rule 76(2)(c) EPC are sufficient for the ground of opposition to be correctly understood by the opposition division and the proprietor, and to be able to be examined as to its validity.
2.5.5 As to the respondent's argument relating to page 8, second paragraph, last sentence of decision T 344/88, the board takes the view that a requirement that the opposition division must actually be able to identify the correct publication number within the nine-month period according to Article 99(1) EPC cannot be derived therefrom. The relevant passage states (point 6 of the Reasons, second paragraph, translation by the board): "It is not relevant whether the Office has actually corrected the error in the period remaining between receipt of the notice of opposition and the expiry of the opposition period. The only decisive factor is that, within the opposition period, the oversight was evident and that the description of the document enabled the Opposition Division to identify it beyond any doubt." In the board's reading, the required "enablement" of the division only means that the necessary information should be available within the time limit, but it is not required that the division also check whether it is indeed in a position to correct the error by itself and still within the time limit. This is clear from the first sentence of the cited passage.
The board observes that this is also the only sensible interpretation of the cited findings of T 344/88. It would be completely unrealistic to expect the opposition division to immediately check such errors - it follows from the normal daily operation of the Office that the division will be assigned to the file only later, and in all likelihood will not even see the file within the opposition period.
On that basis, and in agreement with decision T 344/88, the present board also takes the view that in the case at hand it is decisive that all material and information necessary for (possibly later on) establishing the correct publication number of E2 was submitted prior to expiry of the nine-month period according to Article 99(1) EPC.
In conclusion, the admissibility of the opposition is not called into question by the erroneous publication number of E2 in the notice of opposition. With respect to the line of attack using E2, the opposition was clearly substantiated. Since the argument is rejected, the board must also reject dismissing the appeal (or holding it inadmissible) on the basis of this argument.
3. Opposed patent
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