T 1798/23 - Inconsistent indication of the opposed patent

Key points

• The opponent appeals against the decision to maintain the patent in amended form.
• "the respondent [proprietor] maintained their objection, already raised at opposition proceedings, to the admissibility of the opposition, due to a lack of the necessary information allowing the unambiguous identification of the opposed patent in the notice of opposition."
• t was submitted that while the notice of opposition indicated the correct European patent application No. 16 751 551. 9, the publication number was wrong with regard to the last digit (it indicates EP 3 332 023, whereas the publication number for the patent in suit is EP 3 332 028), as well as the title of the invention reading "Genetic testing for alignment-free predicting resistance of microorganisms against the antimicrobial agents" (this being the title of EP 3 332 023), instead of "Genetic resistance prediction against antimicrobial drugs in microorganism using structural changes in the genome" (this being the title of the patent EP 3 332 028).
• EP EP 3332023 exists, with indeed the title beginning with "Genetic test..."
• " The admissibility of an opposition must be assessed ex officio in every phase of the opposition and ensuing appeal proceedings (e.g. T 1178/04"
• "With [further] submissions dated 30 September 2021 [before the expiry of the opposition period], the notice of opposition was filed anew with the corrected title ("..."). The letter also contained the name of the patent owner (Ares Genetics GmbH), the European patent application No. 16751551. 9 and the patent's publication number EP 3 332 028, all as correctly indicated before in the first notice of opposition."
• From the European Patent Register it can be derived that on 5 October 2021, the EPO issued a communication (Form 2302) indicating deficiencies under Rule 76(2)(b) EPC in the notice of opposition of 29 September 2021.
•  Irrespective of whether the submissions of 30 September 2021 were actually in reply to the EPO's communication of 5 October 2021, due to the opponent becoming aware of the deficiency in advance of the date indicated in that communication, or were filed by the opponent on its own motion, it is evident that the errors were corrected before expiry of the opposition period, as required by Rule 77(1) EPC.
• The opposition was hence admissible.
  
  
• The Board considers the claims to be not inventive. "It is established case law that the question of whether a skilled person would consider a modification of the prior art critically depends on the problem to be solved by the alleged invention. If the only contribution of the invention is to propose something different from the prior art (i.e. the provision of an alternative as in the present case), then it is usually appropriate to consider that the skilled person would take into account any common alternative known in the respective technical field (unless the closest prior art teaches away from it). In such cases it might not even be required to justify the selection of a particular solution, because it was assumed that an invention based on incorporating known features for the sole purpose of establishing novelty must be rendered obvious by a corresponding step of selecting any alternative known in the art"
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EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231798eu1