T 1340/15 - Meaning of "prima facie"

Key points

• In this opposition appeal, the OD had raised on own motion an objection of added subject-matter. The patentee appeals and asks the Board to review this decision. In particular, the patentee argued that the added subject matter was not a matter that could not be decided on "prima facie" in the sense of G 10/91 (with reasons given in consolidated case G 9/91).
The Board considers that G 10/91 means that the opposition division " only had to determine if there were, prima facie, clear reasons for considering the issue of added subject-matter. It follows that the "prima facie" test for admitting the ground for opposition pursuant to Article 100(c) EPC is not to be interpreted so narrowly as meaning that it must be possible to definitively conclude "at first glance" that Article 123(2) EPC is actually infringed. In the present case, in view of the evident ambiguity of the language used in the passage essentially relied on by the appellant for support [], the opposition division had a valid reason for admitting the new ground, especially as the allegedly infringing features would have likely played a role in connection with novelty and/or inventive step."

EPO T 1340/15 -  link

Reasons for the Decision

1. Admissibility of the ground for opposition pursuant to Article 100(c) EPC

1.1 In accordance with case law, an opposition division has the discretionary power to introduce of its own motion a fresh ground for opposition (Article 114(1) EPC). The board's review of this decision is essentially limited to ensuring that the opposition division did not use this power unreasonably.

1.2 The opposition division argued in the impugned decision essentially that claim 1 appeared, prima facie, to extend beyond the content of the application as filed. It therefore introduced the ground for opposition pursuant to Article 100(c) EPC, citing the Guidelines for Examination D-V 2.2 and G 10/91. It also noted that the features in question were central to the arguments brought forward with respect to the ground for opposition pursuant to Article 100(a) EPC.

1.3 The appellant essentially argued in the statement of grounds of appeal that the ground for opposition pursuant to Article 100(c) EPC (based in essence on a non-compliance with Article 123(2) EPC) was not a ground which could have been raised as a result of a "prima facie" examination. In the appellant's view, "prima facie" was to be understood as "at first glance", and the legal question of whether or not the granted claims were covered by the original disclosure of the application as filed could not be solved prima facie, at least not in the present case.

1.4 G 10/91 (OJ 1993, 420) cited by the opposition division and the appellant refers to a new ground being exceptionally admissible "in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent" (cf. point 16 of the reasons [of G 9/91]). Therefore, the opposition division only had to determine if there were, prima facie, clear reasons for considering the issue of added subject-matter (cf. Article 123(2) EPC). It follows that the "prima facie" test for admitting the ground for opposition pursuant to Article 100(c) EPC is not to be interpreted so narrowly as meaning that it must be possible to definitively conclude "at first glance" that Article 123(2) EPC is actually infringed. In the present case, in view of the evident ambiguity of the language used in the passage essentially relied on by the appellant for support (i.e. paragraph [0015] of the application as published, as will be discussed below), the opposition division had a valid reason for admitting the new ground, especially as the allegedly infringing features would have likely played a role in connection with novelty and/or inventive step.

1.5 Consequently, the board concludes that the opposition division reasonably exercised its discretion when introducing the ground for opposition pursuant to Article 100(c) EPC.