T 1657/14 - Single opposition proceedings and withdrawal opposition

Key points

• In this opposition appeal, both opponent 1 and the patentee file an appeal. Opponent 1 withdraws its opposition. Opponent 1 had submitted comments after filing its Statement of grounds and before withdrawing the opposition including the argument that E18 would be novelty destroying because it would implicitly disclose feature M9 of the claim. The OD had found the claim as granted to be not novel over E18, based on arguments that were then submitted by Opponent 2. Opponent 2 had withdrawn its opposition already during the first instance proceedings.
• “The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).”
• As a comment, this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings.

•  The Board also recalls that “However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.”.
• I  think that more precisely, this follows from the 'gold standard' instead of the 'concept of novelty'.

EPO T 1657/14 -  link



2.4.3 The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).

However, the Board does not agree with the arguments of opponent 1 put forward regarding features M8 and M9. In particular, opponent 1 alleged that feature M9 would be implicitly disclosed as the skilled person would read between the lines that determining identity between displayed dose and set dose would require directly comparing a possible input parameter against the actual value of the input parameter (see pages 13 and 20 of the letter dated 7 April 2015).

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2.4.5. However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.