T 0346/16 - Fresh ground of opposition

Key points

• The OD did not admit the ground of Art. 100(b) in the proceedings (the opponent had invoked that ground in the first instance proceedings after the Notice of oppoisition).
• The Board first examines whether that decision to no admit the ground, was reasoned and based on the right principles. 
• The Board: “ It follows that in the appeal proceedings, the ground of Article 100(b) EPC is a fresh ground for opposition within the meaning of G 10/91, which may not be considered without the consent of the respondents as proprietors”. The consent was not given.
• The step of reviewing the first instance decision appears to be an application of Art. 12(6)(s.1), first and second clause by analogy (“(i) The Board shall not admit requests, facts, objections or evidence which were not admitted in the proceedings leading to the decision under appeal, (ii) unless the decision not to admit them suffered from an error in the use of discretion.”
• The Board also does not admit the new ground of Art. 100(c) EPC and the new objection against claim 1 based on that ground. Claim 1 was amended in the course of the opposition (or opposition appeal) proceedings. The Board: “this objection does not arise from the amendments made to claim 1 in the opposition proceedings. Therefore, it amounts to raising a new ground of opposition under Article 100(c) EPC in appeal proceedings. Since the respondents have also not consented to introducing this new opposition ground into the appeal proceedings, it cannot be considered further”

T 0346/16

https://www.epo.org/law-practice/case-law-appeals/recent/t160346eu1.html

4. Fresh grounds of opposition - Articles 100(b) and (c) EPC

4.1 The opposition division decided not to admit the ground of Article 100(b) EPC into the proceedings, using its discretionary power under Article 114(2) EPC, because it was prima facie irrelevant.

4.2 The opposition division's decision was fully reasoned (see appealed decision, point 7 of the reasons) and was based on the right principles. Thus, the opposition division exercised its discretion correctly.

4.3 It follows that in the appeal proceedings, the ground of Article 100(b) EPC is a fresh ground for opposition within the meaning of G 10/91, which may not be considered without the consent of the respondents as proprietors (G 10/91, OJ 1993, 420)). Since this has not been given, this opposition ground cannot be considered further.

4.4 The appellant argued that claim 1 introduced added subject-matter because it failed to require that the transport vessel is equipped with side tanks and centre cargo compartments (paragraph 23 of the patent specification). However, this objection does not arise from the amendments made to claim 1 in the opposition proceedings. Therefore, it amounts to raising a new ground of opposition under Article 100(c) EPC in appeal proceedings. Since the respondents have also not consented to introducing this new opposition ground into the appeal proceedings, it cannot be considered further (G 10/91, OJ 1993, 420).