T 0339/18 - Review decision not to admit opposition ground

 Key points

• The OD held the ground of Article 100(c), submitted after the expiry of the opposition period, to be inadmissible based "its lack of prima facie relevance". The opposition was rejected (also on the other grounds), the opponent appeals and resubmits the Art. 100(c) attack. 
• G 10/91, hn.3 held that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee; the patentee does not consent in the present case.
• However, is it a fresh ground? 
• T 1286/14, r.1.2.4,  indicates that a ground of opposition rejected as inadmissible by the OD and resubmitted with the Statement of grounds is a "new ground" in appeal.
• On the other hand, what if the Opposition Division made a clear mistake when refusing to admit the ground?
• Based on G 7/93 r.2.6, “a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.”
• The present Board follows T 1286/14: “In T 1286/14 the board addressed the limited scope for reviewing exercises of discretion [by the opposition division] to refuse a "fresh ground for opposition" where the proprietor objects to its admittance on appeal. In the case at issue, the opposition division had considered a late-filed ground irrelevant and refused to admit it. In such circumstances, it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this. So, instead of reviewing whether the opposition division had examined such prima facie relevance "correctly" in substance, it merely had to check that such an examination had demonstrably been conducted.”
• “In the present case, the board follows the rationale of T 1286/14 and takes the view that it is apparent from the decision under appeal that the Opposition Division has actually examined whether the ground was prima facie relevant and given reasons for its finding on this, as summarised above”
• See also e.g. T 0178/16.
• T 0188/16 recalls that if the decision not to admit a request is based on a substantive assessment (compliance of the amendment with Art. 123(2) EPC), the Board has to review this substantive assessment.

T 0339/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180339eu1.html

Reasons for the Decision

1. Admittance of the new ground under Article 100(c) EPC

1.1 This new ground for opposition was filed with letter of 21 July 2017, i.e. outside the time limit set by Article 99(1) EPC.

1.2 For the board, the Opposition Division correctly found that deciding on its admittance was within its discretion.

1.2.1 In this respect the first instance questioned whether it was prima facie evident that a violation of Article 123(2) EPC was present as the opponent had obviously not noticed it when drafting the notice of opposition, and found that upon taking into account the complete disclosure of the original application, including the examples, it was clear that []

non-soap surfactants (NSS) were present at a ratio to ethoxylated polyethyleneimine (EPEI) polymers of 2:1 to 7:1, so that the ratio NSS/EPEI of 1:2 to 1:7 disclosed on page 12, lines 13 to 19, of the original application was evidently erroneous, and the obvious rectification was to swap the numerical ratio.

Further, the disclosure on page 12 did not link the amount of the polyethyleneimine (PEI) polymers with the disclosed ratio based on the EPEI, and in any case the amount of PEI was anyhow limited by the amended ratio to a value falling within the originally disclosed range for all PEI polymers. Although granted claim 2 referred to the ratio of NSS to EPEI in step b), i.e. after dilution, as no further actives were added upon dilution in step (b), the claimed ratio present in the wash liquor after dilution was the same as that of the detergent composition in step a) of claim 1. Finally, the subject-matter of either of claims 1 and 2 was not based on multiple selections from different lists, as there was ample support in the original application (e.g. page 38, lines 22 to 25) for compositions comprising additionally a soil release polymer (SRP) together with EPEI polymers.

1.2.2 The Opposition Division thus decided not to admit the late-filed ground for opposition under Article 100(c) EPC into the opposition proceedings in view of its lack of prima facie relevance.

1.3 According to an established principle (Case Law of the boards of Appeal of the EPO, 2019, IV.C.4.5.2) a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.

1.4 In this respect, the present case is very similar if not identical (procedurally) to that dealt with in T 1286/14, as the patent proprietor did not consent to the admittance of the late-filed new ground for opposition not admitted by the Opposition Division.

1.4.1 In T 1286/14 the board addressed the limited scope for reviewing exercises of discretion to refuse a "fresh ground for opposition" where the proprietor objects to its admittance on appeal. In the case at issue, the opposition division had considered a late-filed ground irrelevant and refused to admit it. In such circumstances, it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this. So, instead of reviewing whether the opposition division had examined such prima facie relevance "correctly" in substance, it merely had to check that such an examination had demonstrably been conducted. In other words, its duty to review the exercise of discretion was limited. The competent board, citing G 10/91 (OJ 1993, 420), thus refrained from examining the substance of the fresh ground, thereby following the approach taken in decisions such as T 736/95 (OJ 2001, 191) and rejecting that entailing a thorough review of the earlier exercise of discretion on its merits, as taken in other decisions mentioned in that section of the case law.

1.5 In the present case, the board follows the rationale of T 1286/14 and takes the view that it is apparent from the decision under appeal that the Opposition Division has actually examined whether the ground was prima facie relevant and given reasons for its finding on this, as summarised above.

Therefore, the board's duty to review the exercise of discretion is limited, and does not extend to reviewing whether the opposition division has examined such non prima facie relevance "correctly" in substance.

1.6 It follows from the foregoing that the new ground for opposition under Article 100(c) EPC cannot be admitted into the appeal proceedings without the consent of the patent proprietor.