T 0967/23 - The absolute bar to fresh grounds vs the discretion of Art. 12 RPBA

Key points

•  The Board, in the headnote: "The question of whether a fresh ground of opposition has been raised - and, therefore, of whether the agreement of the patentee is required - has to be distinguished from the question of whether there has been an amendment to a party's appeal case. The admissibility of amendments represents a separate, independent issue and is subject to the discretion of the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• " In the contested decision, the opposition division held that claim 1 was novel over D1 as it did not disclose at least features 1.4 and 1.7. "
• "The board agrees with the contested decision... that D1 does not disclose ... feature 1.4."
• "The appellant [opponent] argued that, even if considered novel, claim 1 would still lack an inventive step over D1 combined with common general knowledge."
• " The appellant submitted that according to established case law and, in particular, to decision T 131/01, an inventive step attack is admissible on appeal even if only a novelty objection was raised during opposition proceedings, because the inventive step is not considered a fresh ground for opposition."
• I think T 131/01 shows that the case law based on G 10/91 is a hodgepodge of rules. G 10/91 did not identify what a 'ground of opposition' is, leaving that to G 7/95 to resolve.  G 7/95 decided that novelty and inventive step are different grounds (despite the structure of Article 100 EPC). T 0131/01 created an 'exception' in a case that was not even about a fresh ground of appeal (the OD had held the inventive step attack inadmissible; the Board reversed that decision, which is nowadays seen as outside the scope of G10/91). 
• If G 10/91 is about bright-line rules, then there should be no such complexity. If G 10/91 is about equitable considerations, then Article 12(4) and (6) RPBA appear to be, de lege ferenda, the way forward.
• The Board applies Art. 12(6) RPBA and does not admit the attack.
• "Under Article 12(6) RPBA, second sentence, the board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance."
•  In the present case, the patent proprietor's and the opposition division's position that D1 did not anticipate claim 1 was known to the opponent before the opposition oral proceedings (see e.g. annex to the summons to oral proceedings in opposition, point 2.2.1). Hence, the board takes the view that any inventive step attack based on D1 could and should have been filed at the latest during those oral proceedings. Moreover, the board cannot identify any circumstances which would justify the admission of such attack on appeal, nor did the appellant provide arguments in this respect."
• "Accordingly, the board decides not to admit the inventive step attack based on D1 into the appeal proceedings, Articles 12(4) and 12(6) RPBA."

EPO 

The link to the decision is provided after the jump.

T 0011/25 - Fresh ground in appeal

Key points

• With the statement of grounds of appeal, the opponent raised for the first time an objection under Article 100(c) EPC. 
• In the appellant's [opponent]s' view, the objection should be admitted as it was closely linked to the objection of sufficiency of disclosure discussed before the opposition division (see point 1.3.1 above). Originally the features were disclosed in the order Fl-F2-F4-F5-F3 but in granted claim 1 the order was Fl to F5. This resulted in an aliud that did not find basis in the original application.
• The Board: 2.2 Even assuming that the objection of added subject-matter is linked, in substance, to the objection of sufficiency of disclosure, still the ground for opposition under Article 100(c) EPC was not submitted and substantiated in opposition proceedings, as acknowledged by the appellant (opponent). It thus constitutes a fresh ground for opposition. As the respondent (patent proprietor) explicitly did not approve the introduction of the new ground for opposition, the objection under Article 100(c) EPC can not be considered in appeal proceedings pursuant to G10/91.
• The Board, under sufficiency: "As the claim does not specify when steps F4 and F5 are executed (before or after the automatic uncoupling), the opposition division correctly stated (decision, 2.1.5) that this objection is rather a clarity objection, and clarity is not a ground for opposition."
• Suppose the proprietor argues, for the first time in appeal,  that in claim 1 the order of the steps was undefined, and because of that, the claim met Art. 83 (and suppose the argument is admitted). Suppose the opponent wishes to point out that the application as filed only provides a basis for the steps in a specific order, and that the opponent was initially unaware that the pre-grant amendment changing the order of the steps changed the meaning of the claim. Can the objection under Art. 123(2) be admitted (independent of the consent of the patentee)?

EPO 

The link to the decision is provided after the jump.

T 0644/24 - Amendments and new grounds of opposition

Key points

• The Board, in the headnote, in translation: "If the grounds for opposition under Article 100(b) EPC and Article 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination in the appeal proceedings, the patent may not be examined in its entirety for insufficient disclosure and added subject-matter in the appeal proceedings if the patent is amended in the opposition or appeal proceedings, but only insofar as the amendment brings about the insufficient disclosure or added subject-matter".
• This concerns the details of G10/91 hn. 3 about new grounds of opposition in appeal. 
• As far as Art. 100(c) is concerned, the current headnote is the same as the holding of T 693/98.
• Concerning Art. 110(b), the point is obiter, it seems. Still, the point seems valid, and the Board's reasoning is interesting (very German in the degree of detail, but good).

EPO 

The link to the decision is provided after the jump.

T 2604/18 - Second insufficiency attack is new ground for opposition ?

Key points

•  The Board does not admit an objection of insufficient disclosure against claims 2 and 3.
• "2.4 In as far as the appellant [opponent] considers the objection of insufficiency of disclosure against claims 2 and 3 to have been raised by analogy against granted claims 9 and 10 in the notice of opposition, the Board considers that the substance of the latter objection was in essence directed against granted method claim 8 and extended only by dependency to claims 9 and 10. [...] The objection raised later against claims 2 and 3, directed to different features than those defined in granted claim 8, would thus be tantamount to the introduction of a new ground for opposition against subject-matter which had not been opposed so far for these specific reasons. The Board of its own motion [*] does not have the power to admit such a late filed ground for opposition (G 9/91, OJ 1993, 408)."
• As a comment, it is remarkable to see G 9/91 (read, presumably, G 10/91 hn.3, i.e. "fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee") applied to a second objection of under Article 100(b) EPC. However, G 10/91 itself is notoriously unclear about what the term "fresh ground for opposition" means.
• The Board's reasoning also seems difficult to reconcile with Art. 12 RPBA 2020, which gives the Board a discretionary power.
• * - the attack was presented by the opponent.

EPO 

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

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.

T 1038/18 - (III) Fresh grounds in appeal

 Key points

•  “The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).”
• “The respondent [patentee] submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.”
• Art. 100(c) was not invoked in the Notice of opposition, nor introduced by the OD. Hence, G 10/91 applies.
• “The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 [headnote 3])”
• I recall that G 10/91 r.19 stated that: “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)”. 
• As this present decision illustrates, this must be applied in the same way as for G 3/14: does the amendment introduce a new (alleged) deficiency into the claims? See also T 0895/18 for a different (in my view, incorrect) approach. 

T 1038/18 

 

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

6.1.2 The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).

The respondent submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.

The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 (OJ EPO 1993, 420), point 3 of the Opinion).

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.

T 1099/16 - Second use claim

 Key points

Non-medical second use claim

• Claim 1 of the patent is a use claim of certain compounds (melamine derivatives) as "as an adhesion enhancer in [a polymer jacket of] an elevator load bearing member". Inventive step is to be decided. The closest prior art is D7 disclosing the use of different compounds as flame retardant in a polymer jacket of an elevator load bearing member. The melamine derivatives of claim 1 are well-known flame retardant. “The use of any of the specific melamine derivatives instead of melamine in a polymer jacket of D7 for their well known flame retardant effect would thus not appear to involve an inventive step.” The question is whether the use feature "as an adhesion enhancer" provides for inventive step. The opponent bascially considers the effect of enhanced adhesion not credible but faces the procedural problem that Art.100(b) is a fresh ground of opposition. 
• “the use of these melamine derivatives [the compounds] as an adhesion enhancer is not known in the prior art, as also acknowledged by the [opponent]. Their use as an adhesion enhancer could thus be considered to involve an inventive step, on the proviso that this use were acknowledged to be a limiting functional feature of the claim within the meaning of G2/88”
• “The Board considers that [G2/88 hn.3] establishes two conditions for interpreting a claimed new purpose (reflecting a new technical effect) as a functional technical feature of the claim which may serve to distinguish the subject-matter over the prior art. Besides the condition that the technical effect has not been made available to the public before the relevant priority date of the application at issue, it is also required that the technical effect in which the claimed use resides, is "described" in the patent”
• “The present decision thus hinges on the interpretation of the expression "described in the patent" used in G 2/88. The two extremes which are conceivably covered by this expression appear to be, on the one hand, i) that the new technical effect must be described in the patent to such an extent that the skilled person understands that the effect is indeed achieved or that the effect is at least plausible, as essentially argued by the appellant as being the relevant standard, or, on the other hand, ii) that the wording of the technical effect is only required to be supported, e.g. merely stated in the description. ... Option ii) resembles the condition of support of the claims by the description according to Article 84 EPC.”
• I'm not sure if all  Boards would agree that merely formal support is sufficient under Art.84.
• The Board notes that there is not much case law on this point. The Board concludes that the question is “merely whether it has been described in the sense that a skilled person can recognize what technical effect is underlying the new purpose claimed” instead of considerations of whether the technical effect is sufficiently credibly or plausibly described in the patent.
• The Board finds that the patent describes the technical effect in that limited sense for the purposes of G2/88. Up to that point the Board does not actually decide that the effect is plausible (if I see it correctly). However, because G2/03, r.2.5.2 said that “if an effect is expressed in a claim, there is lack of sufficient disclosure” and because Art.100(b) is a fresh ground in appeal (and the patentee does not consent) (G10/91) the Board does not need to decide on the actually contested point.

Admissibility appeal

• In the case of an appeal against the rejection of an opposition, there is no reason that an appellant-opponent must rebut all issues decided by the opposition division against it. As long as the appellant sets out reasons in the appeal grounds concerning at least one of the opposition grounds considered in the impugned decision which, if found convincing by the Board, could result in setting aside the decision, the requirement of Rule 99(2) EPC is generally considered to be met.

Request for extended composition of the Board

• The appellant had requested an extended panel (Art. 21)(4)(a) EPC). The Board refuses the request.
Further, if consideration of the technical issues might have arisen beyond these legal issues, the Board cannot see that the underlying matter would have required particular knowledge of molecular chemistry. The technical concepts of adhesion and polarity of molecules belong to common technical university education, not least in the field of mechanical engineering. No reason is evident why the Board's technical competence would be unable to deal with any technical matters arising in this case. Additionally it is noted, as also held by the Enlarged Board of Appeal in R 3/12 (unpublished), Reasons 2.4, that, for the sake of argument, even if the Board's decision were finally based on an imperfect understanding of the technical issues, this would have no implications for the technical qualifications of the Board members in the sense of Article 21 EPC, since this provision only implies a prescribed course of technical education of the members rather than providing a guarantee of an unquestionable understanding of a specific case. There is also no particular case law deriving from the Boards of Appeal in the field of chemistry which the present Board would not be aware of or be unable to apply where fitting. Consequently it was concluded that the nature of the appeal did not require the Board to be complemented by additional Members.

T 1099/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161099eu1.html

EPO Headnote

In order to decide whether a claim to the use of a known compound for a particular purpose, based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature according to G 2/88, the Board finds that G 2/88 does not require the technical effect to be described in the patent in a manner sufficiently clear and complete to make the actual achievement of that technical effect credible (Reasons 17).
This finding applies even to a case where the ground for opposition under Article 100(b) EPC cannot be considered in the appeal proceedings (Reasons 24).
If, for the assessment of inventive step, it has to be determined whether the purpose defined in the claim can be interpreted as a limiting functional feature, the question whether the technical effect is described in the patent merely involves considering whether a skilled person can recognise what technical effect underlies the new purpose claimed (Reasons 20).

Reasons for the Decision

Admissibility of the appeal

1. The admissibility of the appeal was challenged by the respondent based on an alleged failure of the statement of grounds of appeal to comply with Rule 99(2) EPC. For the reasons set out below, the Board concludes however that the requirements of Rule 99(2) EPC are met. The Board is also satisfied that all other requirements for the admissibility of the appeal have been met, noting that the respondent also did not raise any objections in that regard.

The appeal is thus admissible.

2. According to Rule 99(2) EPC the appellant shall indicate in the statement of grounds inter alia the reasons for setting aside the decision impugned.

T 0895/18 - Full examination of Art.123(2)

 Key points

• The patentee appeals. The Notice of opposition was based on inventive step and insufficient disclosure. The OD revoked the patent because of insufficient disclosure. The OD added that “Objections of added subject-matter raised by the opponent at the oral proceedings in respect of the auxiliary requests were not to be followed, because the subject-matter was derivable from the structure of dependency of the claims and from the [examples]”.  
• The main request at issue in appeal is one of the auxiliary requests filed before the OD.
• The patentee argues that by analogy with G3/14 about clarity, the examination of Art.123(2) of this request should not concern the amendments made already in the grant proceedings.
• The Board finds that this argument “fails since it disregards the fact that in contrast to added subject-matter/extension beyond the content of the application as originally filed lack of clarity is not one of the grounds of opposition according to Article 100 EPC”.
• The Board notes that G 10/91, r.19 held that: "In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)."
• Established case law is that said statement of the Enlarged Board “ clearly means that only the amendments made during opposition or appeal proceedings, not those made before grant, must be examined in accordance with Article 102(3) EPC for compliance with the requirements of the EPC, including Article 123(2) EPC.” ( T 693/98, r.2) (CLBA IV.C.3.4.3)
• The present Board: “This law [G10/91, r.19] thus requires that, in case of amendments in opposition or appeal proceedings, full examination of the amendments (and therefore in particular of the claims resulting from the amendments) is to be undertaken on appeal. There is no stipulation that the ground of Article 100(c) EPC has to have been invoked in the notice of opposition.
• As a comment, the Board's remark in brackets seems to be the whole point in dispute and seems controversial to me. The Enlarged Board said "such amendments are to be fully examined", not "the amended claims are to be fully examined" in G10/91, r.19.
• As held in T301/87, r.3.8: “it would seem to be somewhat absurd if the making of a minor amendment could enable objections outside Article 100 EPC to be raised which have no connection with the amendment itself.”

• In the present case, the OD did assess the request at issue for Art.123(2), but it's not clear to me from the decision of this entailed the pre-grant amendments (the OD introducing Art.100(c) as ground of own motion under R.81(1) (which would be surprising as the OD found Art. 100(c) to be complied with while R.81(1) requires “may be examined by the Opposition Division of its own motion if they would prejudice the maintenance of the European patent”) of if the OD carried out the limited examination of the amendments in line with T693/98 such that further Art.100(c) objections would (arguably) be a fresh ground of opposition in appeal. 
• 
  
  
• As to the substance, the patentee tried the argument that: “The application was "typical" of many [applications] which are drafted in the "USA style" and should therefore be read accordingly as disclosing also combination of features of [the] dependent claims even if [the dependent claims as filed] are not dependent on each other”. The argument did not fly. The Board indicates that it must apply Art.123(2) EPC and “no different criterion can be used in view of a deliberately selected drafting style”.
• 
  

T 0895/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180895eu1.html

3. Main request filed with the statement of grounds of appeal

3.1 Article 123(2) EPC - Extent of scrutiny and general considerations

The appellant [patentee] raised three aspects in this respect which in the following are paraphrased in italics:

3.1.1 In the present case examination for compliance with Article 123(2) EPC should be restricted to those amendments made in the opposition procedure, analogously to the approach taken in respect of amendments introducing a lack of clarity. Therefore it was requested that the analysis of compliance with the requirements according to Article 123(2) be based on the patent as granted rather than on the application as originally filed.

The argument in support of a form of "parallelism" between treatment of unclear features and added subject-matter/unallowable amendments introduced pre-grant proposed by the appellant (see section XV.(b).(i), above) fails since it disregards the fact that in contrast to added subject-matter/extension beyond the content of the application as originally filed lack of clarity is not one of the grounds of opposition according to Article 100 EPC.

T 0996/18 - Art. 123(2) ex officio in opposition appeal

 Key points

• In this opposition appeal, the headnote in machine translation reads: “Claims which the patent proprietor has changed by adding features from the description but which have not been examined in opposition proceedings must be examined ex officio in appeal proceedings to determine whether they comply with Article 123(2) EPC (Article 114( 1) EPC, Rule 100(1) EPC).”
• The Board adds to that headnote that otherwise, under certain circumstances, an item would be granted that would only be subject to the disposition of the parties because it would not have been subjected to an examination by the Office at any time (still in translation).
• The opponent(s) had only invoked lack of novelty and lack of inventive step in the opposition. The OD had rejected the opposition. The Board finds the main request and AR-1 and AR-2 to lack an inventive step. The Board then turns to AR-4 filed with the Statement of grounds. Therein claim 1 is amended inter alia by adding a feature taken from the description. The opponent has no objection under Article 123(2) EPC (r.5.1.1). 
• As a comment, if the amendment had been limiting to one of the dependent claims, then Art. 123(2) would (possibly) be a new ground of opposition in appeal and G10/91 r.18 states that such grounds can only be considered with the consent of the patentee. The present decision applies G10/91, r.19: “in case of amendments of the claims ... in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC).”
• The fact that the feature is taken from the description, not from a granted claim, makes that it is the amendment that is fully examined.
• As to the Board raising new objections ex officio in inter partes appeals, see also recent decision T1370/15; as well as T2154/15 explaining that Art. 12 and 13 RPBA 2020 “exclusively rule on the parties' procedural possibilities and not on the board's powers”.

EPO T 0996/18 

epo.org/law-practice/case-law-appeals/recent/t180996du1.html

5.1.1 Die Beschwerdeführerinnen haben zu Hilfsantrag 4 keine Einwände unter Artikel 123 (2) EPÜ vorgebracht.

Für Ansprüche, die der Patentinhaber durch die Aufnahme von Merkmalen aus der Beschreibung geändert hat, die jedoch im Einspruchsverfahren nicht überprüft wurden, ist im Beschwerdeverfahren von Amts wegen zu prüfen, ob sie im Einklang mit Artikel 123 (2) EPÜ stehen (Artikel 114 (1) EPÜ, Regel 100 (1) EPÜ und G 10/91 EPA Abl. 1993, 420, Gründe, 19). Anderenfalls würde unter Umständen ein Gegenstand gewährt, der allein der Disposition der Parteien unterläge, weil er zu keinem Zeitpunkt einer amtlichen Prüfung unterzogen worden wäre.

Im vorliegenden Fall hat die Kammer die Einwände unter Artikel 123 (2) EPÜ erstmalig während der mündlichen Verhandlung vorgebracht. Um den Grundsatz des rechtlichen Gehörs (Artikel 113 (1) EPÜ) und der Waffengleichheit zu wahren, wurde der Beschwerdeführerin Gelegenheit geben, sich zu den Einwänden zu äußern und die Einwände durch das Einreichen eines neuen Hilfsantrags auszuräumen.

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).

T 2155/17 - Fresh ground and claim amendment

Key points

•  In the course of the first instance opposition proceedings, a feature is added to claim 1. The opponent raises an objection of added subject-matter only in its Statement of grounds. The patentee objects that this is a fresh ground in appeal in the sense of G 9/91.
• The Board notes that the objection pertains to the amended part of claim 1, and that the amendment does not consist of combining granted claims, such that r.19 of G9/91 applies: “it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)” 
• The Board: “Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.” 
• The Board considers that the new objection is subject to the discretion under Art. 12(40 RPBA 2007 but does not hold the objection inadmissible. “No arguments were provided by the respondent why the Board should make use of this power and no reason can be found by the Board to hold this objection as inadmissible.”

EPO T 2155/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t172155eu1.html

1. Main request

1.1 Added subject-matter (I) raised in the statement of grounds of appeal

This objection related to the definition of the skin layer as including LLDPE and the absence of the expressions "multilayer film", "printable" and "adjoined to the core layer".

1.1.1 Admittance

The set of claims in question, which was submitted with the response to the notice of opposition as auxiliary request 5 and renumbered as auxiliary request 3 during the oral proceedings, is a set of claims amended in opposition by introducing an additional feature in claim 1 (that the skin layer includes LLDPE) which was not present in the granted claims, but allegedly can be found in the original description as submitted by the respondent.

The objection of added subject-matter relates to this amendment and not to the combination of features in the claims as granted. Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.

T 0178/16 - What is a fresh ground; are grounds facts?

 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.

T 1969/17 - Fresh ground of opposition

Key points

• “Since the ground for opposition pursuant to Article 100(c) EPC was not admitted into the proceedings by the opposition division, it constitutes a fresh ground for opposition within the present appeal proceedings as well. Its introduction therefore requires the consent of the proprietor/respondent (see G 9/91 and G 10/91, Reasons 18). As the respondent does not consent, this ground is not admitted into the proceedings.”
• “it is noted that, according to T 986/93 (Reasons 2.4) and T 620/08 (Reasons 3.4), a board of appeal is at least not barred from considering a late-filed ground for opposition which has been disregarded by the opposition division if it is of the opinion that the opposition division exercised its discretion wrongly in this respect. Similarly, in T 22/15 (Reasons 3.2 to 3.5) it was held that, if the respective reasoning in the impugned decision does not comply with R[Rule 111(2) EPC 2000], considering the late-filed ground for opposition in the appeal proceedings lies in the discretion of the board and depends on whether it is prima facie relevant for the maintenance of the patent.”
• “The ground for opposition concerning inventive step was never raised in the proceedings before the opposition division. It is also to be noted that the alleged lack of inventive step is not based on D1 as the closest prior art, the sole document relied upon in the proceedings before the opposition division. Therefore, this ground of opposition is a fresh one in the appeal proceedings (see also T 448/03, Reasons 5.1 and 5.2). Moreover, the lack of inventive step was not argued within the same factual and evidentiary framework as the novelty objection (see also T 184/17, Reasons 4). The respondent does not agree to its introduction into the appeal proceedings (see G 9/91 and G 10/91, Reasons 18). Thus, this ground is not admitted into the proceedings.”

EPO T 1969/17 -  link

Reasons for the Decision

1. Ground for opposition pursuant to Article 100(c) EPC


1.1 This ground was raised for the first time at the oral proceedings before the opposition division. It was thus at the discretion of the opposition division to admit it. The standard to be applied in such a case is whether the fresh ground prima facie prejudices the maintenance of the patent (G 9/91 and G 10/91, Reasons 16). To the dismay of the board, and as correctly pointed out by the appellant, the decision's reasoning with respect to the non-admittance of this fresh ground (page 6, second paragraph of the decision) is rather short, to say the least.


However, as can be seen from the minutes of the oral proceedings before the opposition division, the appellant as well as the respondent were heard concerning this issue (see the minutes of the oral proceedings before the opposition division, item 1.4). Furthermore, it is clear from the written decision and the minutes that the appellant considered the feature "average cooling rate >=3**(o)C/s to cooling stop temperature" not to be disclosed in the application documents as originally filed, and that the respondent had pointed to paragraph [0029] for support of this feature. It is clear - at least on a prima facie level - that in paragraph [0029] of the application documents as published the "average cooling rate" to cool to the "cooling stop temperature" or "target temperature" is disclosed to be "at least >=3**(o)C/s". Thus, the opposition division concluded that the appellant's submissions with respect to the fresh ground for opposition pursuant to Article 100(c) EPC prima facie did not prejudice the maintenance of the patent as granted. Therefore, although it did not give an explicit explanation for not admitting this ground into the proceedings, it is evident that the opposition division applied the correct standard and, thus, correctly exercised its discretion.

T 0184/17 - Let's admit new grounds in appeal (exceptionally)

Key points

• In this opposition appeal, the Board decides that claim 1 is novel over E1. The opponent then would like to argue that even if E1 does not directly and unambiguously disclose the feature at issue, E1 at least makes the feature obvious. 
• "The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves [in E1], it anyhow lacks an inventive step." E1 describes a detailed process for making drinks and includes a general remark that the processes of E1 can be used for making coffee and tea.
• The patentee argues that inventive step is a new ground of opposition in appeal. "since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91".
• "In the present case, the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings."
• "The new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition [for novelty]"
•  "In conclusion, the board holds that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step can exceptionally be examined in the appeal proceedings without the agreement of the patentee, if it stays within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the present one, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked in appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same."
• As a comment, this decision appears to hollow out the holding of G10/91. Whatever the merits of G10/91 (I'm skeptical about that), I'm not sure if the approach of the present Board contributes to legal certainty for patentees. I doubt whether G10/91 envisaged Technical Boards creating exceptions to its holding. The fact that the Enlarged Board in G7/95 created an exception does not mean (in my view) that Technical Boards can create further exceptions as they deem necessary based on fairness. 
• In earlier decision T 597/07 cited by the Board, the inventive step attack was admitted not by way of exception but based on the Board holding that "the objection of lack of inventive step is not a fresh ground for opposition in the present case". 

EPO T 0184/17 - link

4. New ground of opposition

The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves, it anyhow lacks an inventive step. According to the respondent-opponent, the skilled person, drawing on the teachings of the invention in E1 already cited in the above novelty objection, would adapt as a matter of obviousness the cited process described on pages 29-33 for preparing a beverage from tea leaves in the sense of the contested claim.

The appellant-proprietor contests that the ground of inventive step was neither raised nor substantiated in the notice of appeal and thus constitutes a fresh ground for opposition. Since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91 (OJ 1993, 408 and 420).

T 0021/15 - New? ground of opposition

Key points

• The opponent raises an attack insufficiency of disclosure in appeal. The OD had refused the attack (and the ground of opposition) of Article 100(b) EPC as inadmissible because it was late filed. The opponent argues in the course of the appeal that the OD had not correctly used its discretion to hold the ground inadmissible. However, it had not made that point in its Statement of ground. Therefore, this point is disregarded under Article 12(2) and (4) RPBA by the Board. 
• The question arises whether Article 100(b) is a new ground of opposition in the sense of G 10/91. The Board notes that T 1286/14 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. 
• However, in T 620/08, the Board decided that it is not a new ground if it is "  einem verspäteten Einspruchsgrund [...], der nach ausführlicher Prüfung in der angefochtenen Entscheidung ausdrücklich nicht in das Verfahren zugelassen wurde." If this decision is followed, the admissibility of the ground falls under the discretion of the Board under Article 12(4) RPBA.
• The Board uses the discretion, but makes it entirely dependent on the consent of the patentee to the new ground. Because the patentee does not give the consent, the new ground is rejected as inadmissible under Article 12(4) RPBA. Or at least in this way the Board can leave open the question whether the ground is a "new ground".
• As a comment, I find it rather disappointing that we don't know whether in such a simple procedural scenario, the ground falls under G 10/91 or not. The present decision also confirms also my view that G 10/91 should be obsolete in view of (more recent) Article 12(4) RPBA. It is rather weird that you can present an entirely new novelty attack based on new arguments in appeal without consent of the proprietor (but subject to the Board's discretion of Article 12(4) RPBA) whereas reframing an argument of that the alleged technical effect is not credible  from Article 56 to Article 83 (or vice versa) can be forbidden by the patentee, without any discretion for the Board. 

T 0021/15 - link

Entscheidungsgründe

1. Zulassung des von der Beschwerdeführerin erhobenen Einspruchsgrunds gemäß Artikel 100 b) EPÜ 1973

1.1 In der mündlichen Verhandlung vor der Einspruchsabteilung hat die Beschwerdeführerin bezüglich des erteilten Anspruchs 1 erstmalig den Antrag gestellt, einen weiteren Einspruchsgrund gemäß Artikel 100 b) EPÜ in das Verfahren einzuführen. Die Einspruchsabteilung hat diesen Antrag (und damit den Einspruchsgrund) als verspätet vorgebracht und prima facie nicht relevant angesehen und gemäß Artikel 114 (2) EPÜ nicht in das Verfahren zugelassen hat (vgl. Punkt 19.2 der Entscheidungsgründe). Die Beschwerdeführerin hat im Beschwerdeverfahren geltend gemacht, dass die Einspruchsabteilung von ihrem Ermessen in fehlerhafter Weise Gebrauch gemacht habe (vgl. Beschwerdebegründung, Abschnitt II, Punkt 3 in Verbindung mit Abschnitt V). Sie hat jedoch in ihrer Beschwerdebegründung nicht weiter begründet, warum aus ihrer Sicht das Ermessen von der Einspruchsabteilung fehlerhaft ausgeübt worden sei. In ihrem Schreiben vom 2. Februar 2016 hat sie des Weiteren die Auffassung vertreten, dass ihre Ausführungen in der mündlichen Verhandlung und erst recht in der Beschwerdebegründung zur fehlenden Ausführbarkeit nach Regel 116 (1) EPÜ nicht verspätet seien und deshalb von der Einspruchsabteilung hätten berücksichtigt werden müssen. Sie wiederholte auch, dass sich der Beschwerdegegner in der mündlichen Verhandlung vor der Einspruchsabteilung zur Stützung der vermeintlichen erfinderischen Tätigkeit auf die Schwierigkeiten berufen habe, eine ausführbare Gestaltung der Lehre nach Anspruch 1 zu realisieren (vgl. Abschnitt II).

T 0433/12 - Crossing the box is not sufficient

Key points

• In this case, the question is whether "added subject-matter" is a fresh ground raised in appeal. "it remains to be examined whether crossing the relevant box in Form 2300 [Notice of opposition]  [means] that the ground was present in those proceedings." 
• The Board quotes G 1/95 that the term " fresh ground"  is intended to refer to a ground for opposition which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the Opposition Division. Hence, because the ground was not substantiated (only the box was crossed), it is a fresh ground, and is not admitted.
• As a comment, I wonder what the purpose (or legal effect) of the box in Form 2300 is. EPO Forms should, in my opinion, not include boxes without legal effect (apart from things like reference numbers). 

EPO T 0433/12 - link

4. Added subject-matter

In its written submissions in the appeal proceedings the appellant (opponent) argued that the last two features of the claim added subject-matter, so the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent.

In its notice of opposition, on Form 2300, the appellant (opponent) had crossed the box indicating that said ground was amongst those regarded as prejudicial to maintenance of the patent. However, no arguments in support of this ground were presented in the notice of opposition. Subsequently the Opposition Division refused to consider this ground for opposition when the opponent eventually substantiated it in the first-instance oral proceedings (impugned decision, Reasons, point 2.1).

The last two features of the claim were contained in claim 1 of the patent as granted, so they do not constitute amendments which, pursuant to G9/91, Reasons, point 19 (OJ 1993, 408), the Board has the power to examine ex officio for compliance with the requirements of the EPC.

Concerning patents as granted, in G10/91 (OJ 1993, 420, Reasons, point 3) the Enlarged Board of Appeal decided that "Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee."

T 1286/14 - Review not admitted grounds

Key points

• The Opposition Division had not admitted the late-filed ground of added subject-matter into the procedure. The argument had been resubmitted by the Opponent with its Notice of appeal. 
• The Board uses the opportunity to explain that in such cases it can only review how the OD has exercised its discretion and may not admit the ground of its own motion, in the absence of the consent of the patent proprietor, under G 10/91. 

T 1286/14 -  link

Entscheidungsgründe

1. ANSPRÜCHE WIE ERTEILT (HAUPTANTRAG)

1.1 Der erteilte Anspruch 1 (gemäß der Merkmalsgliederung der Beschwerdeführerin) umfasst die folgenden Merkmale:

a) Anlage umfassend mindestens zwei Aktorbaugruppen und eine Busleitung zur Verbindung der zwei Aktorbaugruppen, wobei
b) die Busleitung einen Kommunikationskanal und einen Kommunikationsspannungsversorgungskanal aufweist;
c) die mindestens zwei Aktorbaugruppen jeweils eine Systemschnittstelle aufweisen, welche zum Anschluss der Busleitung an die Aktorbaugruppen in einem Steuerungssystem ausgebildet sind;
d) die Systemschnittstelle einen K-Anschluss zur Verbindung des Kommunikationskanals, einen K-U-Anschluss zur Verbindung des Kommunikationsspannungsversorgungskanals und einen A-U-Anschluss zur Verbindung eines Aktorspannungsversorgungskanals aufweist;
e) die Aktorspannungsversorgung unter Zwischenschaltung einer Not-Aus-Vorrichtung in eine der Aktorbaugruppen oder in die Busleitung eingespeist wird;
f) die Not-Aus-Vorrichtung eine Abschaltung der Aktorbaugruppen bewirkt;
g) eine Betätigung der Not-Aus-Vorrichtung über den Kommunikationskanal übermittelbar ist.

1.2 Zulassung des Einspruchsgrunds nach Artikel 100 c) EPÜ

1.2.1 Die Beschwerdeführerin [Opponent] trug im schriftlichen wie mündlichen Beschwerdeverfahren vor, dass Anspruch 1 wie erteilt nicht die Erfordernisse des Artikels 123(2) EPÜ erfülle, da das Verwenden des Begriffs "Busleitung" gemäß Merkmale a)a) , b) und c) eine unzulässige Verallgemeinerung der laut ursprünglicher Beschreibung zwischen zwei Aktorbaugruppen mit drei Anschlüssen eingesetzten, als Dreidrahtleitung realisierten "Systembusleitung 12" darstelle. 

Daher sei dieser Einwand, im Gegensatz zur Feststellung in der angefochtenen Entscheidung, prima facie relevant im Sinne von G 10/91 und müsse von der Kammer in das Beschwerdeverfahren nicht nur zugelassen, sondern auch - nach einer sachlichen Überprüfung - als der Aufrechterhaltung des Streitpatents entgegenstehend betrachtet werden.

1.2.2 Aus der vorliegenden Akte geht hervor, dass die Beschwerdeführerin den obigen Einspruchsgrund nach Artikel 100 c) in Verbindung mit 123(2) EPÜ gegen Anspruch 1 wie erteilt erstmals mit ihrem Schreiben vom 11. Februar 2014 im Einspruchsverfahren erhoben hatte (vgl. Punkt I oben). Somit wurde dieser Einwand nicht rechtzeitig mit der Einspruchsschrift gemäß Artikel 99(1) in Verbindung mit Regel 76(2) c) EPÜ und folglich verspätet im Sinne von Artikel 114(2) EPÜ vorgebracht. Die Einspruchsabteilung hat diesen Einspruchsgrund nicht in das Einspruchsverfahren zugelassen mit der Begründung, dass er verspätet vorgebracht und prima facie nicht relevant sei (vgl. angefochtene Entscheidung, Gründe 14). Dennoch hat die Beschwerdeführerin diesen Einwand in ihrer Beschwerdebegründung nochmals geltend gemacht (vgl. Punkt III oben). Zur Klärung der Frage, ob nun - wie von der Beschwerdeführerin gefordert - eine sachliche Überprüfung der erstinstanzlichen Ermessensentscheidung in der Tat geboten ist, bedarf es nach Auffassung dieser Kammer einer Auslegung der einschlägigen Rechtsprechung der Großen Beschwerdekammer.

T 0350/13 - Implicit consent fresh ground

Key points

• A fresh ground of opposition in appeal can only be admitted with the consent of the patent proprietor. An initial substantive rebuttal of the new ground does not amount to implicit consent. In any case, the consent can be later denied by the proprietor.
• The Board appears to indicate that the date of an appealed decision of the OD is that of the written decision, not that of the oral proceedings. 
• The name of the professional representative of a party is sufficient for identifying the appellant in view of admissibility.  Another Board said recently the opposite In T 2561/11, at 2.4 (decision date is that of oral proceedings, not that of written decision). 

T 0350/13 - link

Reasons for the Decision

1. Admissibility of the opponent's appeal

1.1 According to Rule 99(1)(a) EPC the notice of appeal shall contain the name and address of the appellant. According to established case law of the Boards of Appeal the requirements of Rule 99(1)(a) EPC are satisfied if the notice of appeal contains sufficient information for identification of the party (cf. T 624/09). Furthermore, deficiencies concerning the indication of the appellant's name and address do not necessarily need to be remedied within the time limit pursuant to Article 108 EPC, but can be remedied later following an invitation under R 101(2) EPC (cf. T 2330/10).

T 2091/12 - Fresh grounds: novelty

Key points

• The opponent-appellant had raised a lack of novelty objection based on prior use for the first time in appeal. This is a fresh ground and is not admitted under G 7/95. Lack of inventive step based on the same prior use is not admitted, under article 13(3) RPBA, because opponent had argued it for the first time in his written submissions after the summons.

T 2091/12 - link

Reasons for the Decision

1. Fresh ground for opposition (lack of novelty)

1.1 According to the headnote of G 7/95, OJ EPO 1996, 649, "In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee".

1.2 In its statement of grounds of appeal the appellant raised for the first time in the present opposition-appeal proceedings a lack of novelty objection based on alleged prior uses and filed evidence therefor.

1.3 The respondent explicitly requested that the above-mentioned fresh ground for opposition not be introduced into the appeal proceedings.

1.4 Given that according to G 7/95, supra, the board has no power to examine the above-mentioned fresh ground for opposition without the patent proprietor's agreement, the board does not admit the appellant's lack of novelty objection into the appeal proceedings.