15 Aug 2019

T 2278/14 - Extent of opposition

Key points
  • In this opposition appeal, the opposition had been restricted to independent claim 13 as granted only. During the oral proceedings, the Board concludes that claim 13 is not novel. The proprietor then files a request wherein independent claim 13 is cancelled, the other claims are maintained. 
  • The Board applies G 9/91 and concludes that the remaining claims - which were not opposed - are "not subject of the opposition proceedings" and are therefore allowable without further examination.
T 2278/14 - link

Allowability of the claim request
4. The opposition was directed only against claim 13 of the patent (see notice of opposition, section V) and the grounds for opposition were also limited to claim 13 and its subject-matter (Rule 76(2)(c) EPC; see page 1 of these grounds). 
The Enlarged Board of Appeal in its decision G 9/91 (OJ EPO 1993, 408) remarked that "by limiting the extent to which the patent is opposed to only certain subject-matters, the opponent deliberately refrains from making use of his right under the EPC to oppose remaining subject-matters covered by the patent. Such subject-matters are therefore, strictly speaking, not subject to any "opposition" in the sense of Articles 101 and 102 EPC, nor are there any "proceedings" in the sense of Articles 114 and 115 EPC in existence concerning such non-opposed subject-matters. Consequently, the EPO has no competence to deal with them at all (see reasons, point 10). It is furthermore noted that, where an opposition is explicitly directed only to the subject-matter of an independent claim, subject-matter covered by claims dependent on that claim may also be examined as to patentability, in the case the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information (see reasons, points 10 and 11).
5. Now that independent claim 13 and dependent claim 14 of the former main request, have been deleted, it follows that the main request and its subject-matter are allowable because they are not subject of the opposition proceedings.

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