Key points
- Let me first emphasize that it's good the EPO provides for judicial review by panels capable of dealing with complex technology as in the present patent. However, this post is about the procedural aspects of the case.
- If the OD decides not to admit a new ground of opposition (namely, insufficient disclosure), is this ground a 'fresh ground' in the sense of G 10/91 that may only be considered with the consent of the patentee, according to G10/91?
- The present Board first summarizes case law and then leaves open the question: “According to decision G 10/91 [] fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patent proprietor. According to G 7/95 [] the term "a fresh ground for opposition" [] must be interpreted as having been intended to refer to a new legal basis for objecting to the maintenance of the patent, which was not both raised and substantiated in the notice of opposition, and which was not introduced into the proceedings by the Opposition Division []. The Boards in [ T 0620/08 and T 0986/93] considered the term "fresh ground" somewhat differently as a ground which is relied upon for the first time in appeal proceedings. A Board of Appeal was at least not barred from considering a ground for opposition not raised and substantiated within the nine month period but relied upon later during the opposition proceedings even without the consent of the patent proprietor if they were of the opinion that the Opposition Division had exercised their discretion in this respect wrongly.”
- The Board does not seem to find that the OD abused its discretion but still turns to the "at least not barred" leg of the test of T620/08. The Board finds that "at least not barred" means that the Board can admit the ground as a matter of discretion under Art. 12(4) RPBA 2007
- “The question whether or not the ground for opposition pursuant to Article 100(b) EPC is considered a fresh ground which can only be considered with the patent proprietor's approval does not, under the present circumstances, have to be decided, because the Board holds it [="the ground for opposition pursuant to Article 100(b) EPC"] inadmissible pursuant to Article 12(4) RPBA 2007.”
- “Even if a Board of Appeal is not barred from considering a ground for opposition not considered by the Opposition Division, they have the power to hold inadmissible facts, evidence or requests, which were not admitted in the first instance proceedings pursuant to Article 12(4) RPBA 2007”
- This quote as such is correct, but the link between a power to hold inadmissible "facts, evidence or requests" and the question of whether to consider a "ground for opposition" is not clear to me.
- As a comment, apparently the phrase "facts, evidence or requests" in Art. 12(4) RPBA 2007 includes "grounds of opposition" according to this Board because this Board holds the ground of opposition inadmissible under Art. 12(4) RPBA 2007.
- As a further comment, Article 114(2) refers to late filed facts and evidence, not to late filed grounds, so I would need to look up which Article of the EPC is the legal basis for the holding of G 10/91.
- Of course, any new facts submitted as part of the new ground can be held inadmissible under the clear wording of Art. 114(2) EPC.
Review of decision to not admit - The present Board: “As explained in G 10/91 [] the main criterion on which the discretionary decision [of the opposition division] is to be based is prima facie relevance. This is the criterion used by the Opposition Division in the present case. The Board observes that the statement of grounds of appeal does not contain any explanation as to why the Opposition Division exercised their discretion in a legally incorrect or unreasonable way, but instead only argues to the effect that the conclusion of the Opposition Division concerning the substance was not justified.”
- I fail to see how an opponent can assert prima facie relevance of the late filed ground other than through arguing the substance of the ground of opposition.
EPO T 0178/16 - link
3. Admittance of the Ground for Opposition Pursuant to Article 100(b) EPC
3.1 The Board does not admit the ground for opposition pursuant to Article 100(b) EPC pursuant to Article 12(4) RPBA 2007, which is applicable by virtue of Article 25(2) RPBA 2020.
3.2 The ground for opposition under Article 100(b) EPC (sufficiency of disclosure) was not raised by the then opponents, now appellants, within the nine month period pursuant to Article 99 EPC and was not substantiated in the statement of grounds for opposition pursuant to Rule 76(2)(c) EPC. The Opposition Division considered they had a discretion not to consider this ground because it was not submitted in due time and not prima facie relevant. The appellants state that the Opposition Division should have admitted the objection and in the statement of grounds of appeal request that the Board consider the ground for opposition under Article 100(b) EPC.
3.3 According to decision G 10/91 (OJ EPO 1993, 420) headnote 3, fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patent proprietor. According to G 7/95 (OJ EPO 1996, 626), reasons 5.3, the term "a fresh ground for opposition" which is used in paragraph 18 of G 10/91, must be interpreted as having been intended to refer to a new legal basis for objecting to the maintenance of the patent, which was not both raised and substantiated in the notice of opposition, and which was not introduced into the proceedings by the Opposition Division in accordance with the principles set out in paragraph 16 of G 10/91, see also decisions T 1286/14, reasons 1.2 and T 1298/15, reasons 1.1 to 1.2. The Boards in decisions T 0620/08, reasons 3.1 to 3.4 and T 0986/93 (OJ EPO 1996, 215), reasons 2.1 to 2.5 considered the term "fresh ground" somewhat differently as a ground which is relied upon for the first time in appeal proceedings. A Board of Appeal was at least not barred from considering a ground for opposition not raised and substantiated within the nine month period but relied upon later during the opposition proceedings even without the consent of the patent proprietor if they were of the opinion that the Opposition Division had exercised their discretion in this respect wrongly.
Even if a Board of Appeal is not barred from considering a ground for opposition not considered by the Opposition Division, they have the power to hold inadmissible facts, evidence or requests, which were not admitted in the first instance proceedings pursuant to Article 12(4) RPBA 2007, which applies pursuant to Article 25(2) RPBA 2020. The Board considers this to be in line with decision T 0021/15, reasons 1.1. to 1.7.
3.4 The Opposition Division did not exercise their discretionary power erroneously.
The parties do not contest that the ground for opposition was late filed. According to Article 114(2) EPC and G 10/91, the Opposition Division had a discretionary power not to consider this ground for opposition. As explained in G 10/91 and in further detail in T 1298/15, loc. cit., the main criterion on which the discretionary decision is to be based is prima facie relevance. This is the criterion used by the Opposition Division in the present case. The Board observes that the statement of grounds of appeal does not contain any explanation as to why the Opposition Division exercised their discretion in a legally incorrect or unreasonable way, but instead only argues to the effect that the conclusion of the Opposition Division concerning the substance was not justified.
3.5 The question whether or not the ground for opposition pursuant to Article 100(b) EPC is considered a fresh ground which can only be considered with the patent proprietor's approval does not, under the present circumstances, have to be decided, because the Board holds it inadmissible pursuant to Article 12(4) RPBA 2007.
Article 12(4) RPBA 2007 vests the power in a Board of Appeal not to consider, inter alia, facts and requests which which [sic] could have been presented or were not admitted in the first instance proceedings.
Firstly, the ground for opposition was - correctly, as argued in section 3.4 above - not admitted by the Opposition Division into the first instance proceedings. Hence, the Board does not see any justification for considering it in the appeal proceedings. Secondly, the the [sic] technical submissions made by the patent proprietor during the first instance opposition proceedings cannot serve as a justification for the admission of the late filed ground for opposition pursuant to Article 100(b) EPC. These submissions do not include any surprising fact or view which would have put the appellants in the position to raise the objection of lack of sufficiency of the disclosure for the first time in the letter dated 21 September 2015. Rather, they referred to the claim as granted and to document D1, which were both known to the appellants before the lapse of the nine month opposition period. The appellants appear to argue that because the submissions of the respondent incited them to raise the ground under Article 100(b) EPC, the late filing was justified. Rather, the appellants could have been expected to raise this ground within the nine month opposition period because all the facts and evidence were already known to them at that time.
Even if a Board of Appeal is not barred from considering a ground for opposition not considered by the Opposition Division, they have the power to hold inadmissible facts, evidence or requests, which were not admitted in the first instance proceedings pursuant to Article 12(4) RPBA 2007, which applies pursuant to Article 25(2) RPBA 2020. The Board considers this to be in line with decision T 0021/15, reasons 1.1. to 1.7.
3.4 The Opposition Division did not exercise their discretionary power erroneously.
The parties do not contest that the ground for opposition was late filed. According to Article 114(2) EPC and G 10/91, the Opposition Division had a discretionary power not to consider this ground for opposition. As explained in G 10/91 and in further detail in T 1298/15, loc. cit., the main criterion on which the discretionary decision is to be based is prima facie relevance. This is the criterion used by the Opposition Division in the present case. The Board observes that the statement of grounds of appeal does not contain any explanation as to why the Opposition Division exercised their discretion in a legally incorrect or unreasonable way, but instead only argues to the effect that the conclusion of the Opposition Division concerning the substance was not justified.
3.5 The question whether or not the ground for opposition pursuant to Article 100(b) EPC is considered a fresh ground which can only be considered with the patent proprietor's approval does not, under the present circumstances, have to be decided, because the Board holds it inadmissible pursuant to Article 12(4) RPBA 2007.
Article 12(4) RPBA 2007 vests the power in a Board of Appeal not to consider, inter alia, facts and requests which which [sic] could have been presented or were not admitted in the first instance proceedings.
Firstly, the ground for opposition was - correctly, as argued in section 3.4 above - not admitted by the Opposition Division into the first instance proceedings. Hence, the Board does not see any justification for considering it in the appeal proceedings. Secondly, the the [sic] technical submissions made by the patent proprietor during the first instance opposition proceedings cannot serve as a justification for the admission of the late filed ground for opposition pursuant to Article 100(b) EPC. These submissions do not include any surprising fact or view which would have put the appellants in the position to raise the objection of lack of sufficiency of the disclosure for the first time in the letter dated 21 September 2015. Rather, they referred to the claim as granted and to document D1, which were both known to the appellants before the lapse of the nine month opposition period. The appellants appear to argue that because the submissions of the respondent incited them to raise the ground under Article 100(b) EPC, the late filing was justified. Rather, the appellants could have been expected to raise this ground within the nine month opposition period because all the facts and evidence were already known to them at that time.
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