T 0077/18 - Fresh grounds in appeal

Key points

• The Board decides that " that the ground for opposition under Article 100 (c) EPC should be treated as a fresh ground at the appeal stage and its admittance should be governed by the principles set forth in G 10/91" (i.e. only admitted with the consent of the patentee) in cases wherein "[the ground] was raised during the oral proceedings before the opposition division but had deliberately not been decided upon by the opposition division". 
• The OD found claim 1 to be not novel and, by dealing with novelty before the  Art.100(c) attack against independent claim 17, did not arrive at the Art. 100(c) attack (in particular because claim 1 as amended in the auxiliary requests was found to be obvious and the patent was revoked by the OD on those grounds).
• I note that this actually a quite important decision because there seems to be no case law on the point.
• Bostedt in Singer/Stauder/Luginbühl, 8th ed., Art. 101, note 61 writes: "Umstritten ist die Behandlung der Fälle, in denen die Einspruchsabteilung ihr Ermessen dahingehend ausgeübt hat, den neuen Einspruchsgrund nicht in das Verfahren zuzulassen." Hence, in case the OD holds the new ground inadmissible based on the wrong principles, the Board can admit the new ground, according to one line of case law.
• The present decision suggest that if the OD does not decide on the admissibility of the ground at all, the Board may not admit it without the consent of the patentee.
• The Board in the present case: "However, in the absence of a positive decision on admittance by the opposition division, the Board considers that the ground for opposition under Article 100 c) EPC should be treated as a fresh ground at the appeal stage and its admittance should be governed by the principles set forth in G 10/91, which require the proprietor's consent for its introduction in the appeal proceedings."

EPO T 0077/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180077eu1.html

3. Admittance of the ground for opposition under Article 100 c) EPC

3.1 The ground for opposition under Article 100 c) EPC, had not been raised in the notice for opposition.

During the oral proceedings before the opposition division on 15 September 2017 the opponent raised this ground for opposition for the first time. According to the minutes of the oral proceedings (see section 2.4) the parties were explicitly reminded by the opposition division that, whilst the opponent was given the opportunity to present his arguments regarding the new ground for opposition, this new ground was not yet admitted into the proceedings. Neither the minutes of the oral proceedings nor the decision under appeal indicate that the opposition division at any later stage decided to admit the new ground for opposition.

3.2 The principles as set out in the opinion of the Enlarged Board of Appeal of G 10/91 apply. The Enlarged Board clarified that grounds not properly covered by the notice for opposition should only be considered by the opposition division if prima facie for clear reasons such grounds appear to prejudice the maintenance of the patent (see G 10/91 section 16). The Enlarged Board further explained that the purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits and that it is not in conformity with this purpose to consider grounds for opposition on which the decision under appeal has not been based. Fresh grounds for opposition may therefore in principle not be introduced at the appeal stage, but an exception to this principle is justified if the proprietor agrees with the consideration of the fresh ground for opposition and if the Board considers the fresh ground to be already prima facie highly relevant (see G 10/91 section 18).

3.3 The respondent argued that the ground for opposition under Article 100 c) EPC should be considered during the appeal proceedings or else by the opposition division following remittal notwithstanding the appellant's denied consent to its introduction into the proceedings, because this ground was not raised for the first time during the appeal proceedings and because this ground was prima facie highly relevant with respect to claim 17 as granted.

The Board observes that the respondent's requests regarding the ground for opposition under Article 100 c) EPC confront the Board with the issue of admittance of a new ground for opposition which was raised during the oral proceedings before the opposition division but had deliberately not been decided upon by the opposition division. However, in the absence of a positive decision on admittance by the opposition division, the Board considers that the ground for opposition under Article 100 c) EPC should be treated as a fresh ground at the appeal stage and its admittance should be governed by the principles set forth in G 10/91, which require the proprietor's consent for its introduction in the appeal proceedings. In view of the appellant's refusal thereto, the ground for opposition under Article 100 c) is not to be introduced in the appeal proceedings.

In any case, for the reason presented in section 3.4 below the Board considers that the raised ground for opposition under Article 100 c) is not prima facie highly relevant and is in line with the principles as set out in G 10/91 not to be introduced in the appeal proceedings irrespective of any consent from the appellant.