Fresh ground of opposition in appeal proceedings

A fresh ground of opposition in appeal proceedings is – if any – only admissible with the consent of the patentee. But what if the fresh ground of opposition relating to lack of inventive step relates to the same document as the grounds of lack of novelty cited in the contested decision?

It seems to save effort and time and puts efficient pressure on the other party if in a patent procedure one aims first either at lack of inventive step and then at lack of novelty or vice versa. However, this is only permissible – if any – in principle with the consent of the patent proprietor.

An appeal which has no connection with the grounds stated in the contested decision (lack of inventive step) and is directed only to a fresh ground of opposition (lack of novelty) based on a new document is considered as a new opposition and is not admissible in the current proceedings.

But what if a fresh ground of opposition based on lack of inventive step relates to the same document as the grounds of lack of novelty stated in the contested decision?

The facts of the case

This was the decisive point of contention in the present case, which was recently decided before the European Patent Office (EPO, T 184/17). In this case concerning a European Patent (EP 2384133) (a patent on a method for brewing tea in capsules), the lack of inventive step was claimed by the respondent for the first time in the appeal.

This ground of opposition referred to the same passages of the same prior art document used in the earlier and unsuccessful lack-of-innovation objection. However, the patentee did not agree to the introduction of the fresh ground of opposition into the proceedings and instead claimed that it was a new appeal.

Fresh ground for opposition – without consent?

This raised the question whether the new opposition could be admitted to the appeal proceedings without the patentee’s consent under these circumstances. In principle, fresh grounds for opposition may only be examined in appeal proceedings with the consent of the patentee (see G10/91).

With regard to a fresh ground for opposition, the Enlarged Board of Appeal also stated in decision G7/95 that lack of novelty and lack of inventive step, although both fall under Article 100(a) EPC, are different legal grounds for opposition.

Landmark decisions of the Board of Appeal

A glance at other landmark decisions of the Board of Appeal shows the implementation of this case law. In T 1029/14, the appellant argued for the first time during the appeal proceedings that the subject-matter of claim 1 was not inventive step. This objection was not admitted to the proceedings (under Art. 13(3) RPBA 2007) and with reference to T 448/03.

In a further case (see T 350/13), it was also decided that the fact that the patentee at any time reacted substantively to the fresh ground of opposition could not be interpreted as an implicit or binding consent to the introduction of this ground of opposition.

However, if the appellant had already pointed out in the notice of opposition that the claimed subject matter would lack inventive step if found to be novel, this objection was admitted to the appeal proceedings (T 131/01; T 597/07).

And in case T 448/03, in which inventive step was not discussed at all in the opposition proceedings, but also for the first time in the appeal proceedings, the fresh ground for opposition was not admitted – irrespective of the fact that the document used as a starting point for the objection regarding inventive step was the same document which had been used before to attack novelty.

New ground for opposition in the same factual and evidential framework

In the present case, however, not only was the same document the starting point for the original ground of opposition as for the newly raised fresh ground of opposition, but both grounds of opposition related to only the same document and the same passages.

Therefore, the Board of Appeal held that the factual and evidential context was essentially the same. If an objection of lack of inventive step remains within the same factual and evidential scope of a novelty objection duly raised and substantiated in the notice of opposition, a lack of inventive step could exceptionally be examined in appeal proceedings without the consent of the patentee, the Board of Appeal ruled. This also applies if – as in the present case – the ground of lack of inventive step was neither asserted and substantiated in the notice of opposition nor discussed in the opposition proceedings.

However, this does not mean that the ground of lack of inventive step, which is based on the same prior art, is always implicit in a duly substantiated claim of lack of novelty, the Board of Appeal added. The decisive point is that the newly raised objection must remain within the same factual and evidential framework as a novelty objection duly raised and substantiated in the notice of opposition.

The Board therefore decided to include the raised objection of inventive step in the appeal proceedings (Article 114(1) EPC) without the consent of the patentee.

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