T 0219/12 - Novelty as new ground

Key points:

• The appealing opponent had submitted D4, a novelty destroying Article 54(3) EPC document with the statement of grounds. The Board does not consider this document, because novelty was a fresh ground of opposition in appeal, since lack of novelty was not substantiated in the Notice of opposition. Ticking the box in Form 2300 is not enough.

 EPO T 219/12 (link)

Summary of Facts and Submissions

I. The opponent lodged an appeal against the decision posted on 22 November 2011 rejecting the opposition filed against European patent No. 1 728 529. In the decision under appeal, the Opposition Division held that the patent as granted satisfied the requirements of Article 100(a), (b) and (c) EPC.

VIII. The arguments of the respondent-patent proprietor relevant for the present decision are summarised as follows:

Novelty

The opposition brief did not contain any arguments or evidence regarding lack of novelty. Thus, following G 10/91, novelty based on D4 was a fresh ground of opposition which should not be considered in the appeal proceedings. Since D4 had not been filed earlier during the opposition proceedings and was prior art under Article 54(3) EPC, being thus only relevant for this fresh ground for opposition, it should not be admitted into the proceedings.

Reasons for the Decision

4.4 Admissibility of novelty as new ground for opposition

In the notice of opposition, the grounds for opposition under Article 100(a) EPC had only been substantiated concerning the requirement of inventive step under Article 56 EPC. Apart from a cross in the box corresponding to lack of novelty in EPO opposition Form 2300, the notice of opposition did not contain any indication of facts, evidence and arguments in support of the lack of novelty of the subject-matter of claim 1 of the contested patent. In the absence of any substantiation of the ground of lack of novelty in the notice of opposition, and following established case law (as cited in Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.D.3.1), the ground of lack of novelty is regarded as not having been raised.


The appellant raised a novelty objection for the first time in its statement of grounds of appeal. The objection was based on newly cited document D4, which the parties considered to constitute prior art under Article 54(3) EPC.


It follows that the ground of lack of novelty is a fresh ground for opposition, which, according to decision G 10/91 (Reasons, point 18), could be considered in the present appeal proceedings only with the approval of the proprietor. Since the proprietor expressly refused to give that approval, the ground of lack of novelty is not to be considered (irrespective of the prima facie relevance which D4 may have