T 0433/12 - Crossing the box is not sufficient

Key points

• In this case, the question is whether "added subject-matter" is a fresh ground raised in appeal. "it remains to be examined whether crossing the relevant box in Form 2300 [Notice of opposition]  [means] that the ground was present in those proceedings." 
• The Board quotes G 1/95 that the term " fresh ground"  is intended to refer to a ground for opposition which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the Opposition Division. Hence, because the ground was not substantiated (only the box was crossed), it is a fresh ground, and is not admitted.
• As a comment, I wonder what the purpose (or legal effect) of the box in Form 2300 is. EPO Forms should, in my opinion, not include boxes without legal effect (apart from things like reference numbers). 

EPO T 0433/12 - link

4. Added subject-matter

In its written submissions in the appeal proceedings the appellant (opponent) argued that the last two features of the claim added subject-matter, so the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent.

In its notice of opposition, on Form 2300, the appellant (opponent) had crossed the box indicating that said ground was amongst those regarded as prejudicial to maintenance of the patent. However, no arguments in support of this ground were presented in the notice of opposition. Subsequently the Opposition Division refused to consider this ground for opposition when the opponent eventually substantiated it in the first-instance oral proceedings (impugned decision, Reasons, point 2.1).

The last two features of the claim were contained in claim 1 of the patent as granted, so they do not constitute amendments which, pursuant to G9/91, Reasons, point 19 (OJ 1993, 408), the Board has the power to examine ex officio for compliance with the requirements of the EPC.

Concerning patents as granted, in G10/91 (OJ 1993, 420, Reasons, point 3) the Enlarged Board of Appeal decided that "Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee."

The appellant (patent proprietor) did not give its approval to a new ground for opposition being admitted into the appeal proceedings.

Hence, it remains to be examined whether crossing the relevant box in Form 2300 and/or the Opposition Division's discretionary decision not to admit this ground for opposition into the first-instance proceedings mean that the ground was present in those proceedings.

In its decision G1/95 (OJ 1996 EPO, 615) the Enlarged Board of Appeal stated the following under Reasons, point 5.3:

"The Enlarged Board in G 10/91 first used the term "a fresh ground for opposition" in paragraph 18, in the context of considering the proper application of Article 114(1) EPC during opposition appeal proceedings (see paragraph 1.2 above). It is clear that this term is intended to refer to a ground for opposition which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the Opposition Division in application of Article 114(1) EPC and in accordance with the principles set out in paragraph 16 of G 10/91" (emphasis added by the Board).

In the present case the ground was not substantiated in the notice of opposition and, as explained, was also not introduced into the proceedings by the Opposition Division.

The appellant (opponent) presented no further reasons why this discretionary decision by the Opposition Division should be revised, and the Board does not see any either.

Hence, the ground for opposition according to Article 100(c) EPC was not in the opposition proceedings and the Board has no power to examine it in the appeal proceedings.