The opposition against a European patent on sheet steel was rejected. This case is interesting in view of the sufficient disclosure for a European patent and the introduction of fresh grounds for opposition in ongoing proceedings, especially since the contested decision was insufficiently reasoned.
The opposition to a European patent on a process for manufacturing a high-strength steel sheet (EP 2 546 368) was rejected by the Board of Appeal. This case (T 1969/17) is interesting in view of the sufficient disclosure for a European patent and the introduction of fresh grounds for opposition in ongoing proceedings, especially since the contested decision was insufficiently reasoned.
Originally, the opposition was based on the grounds of insufficient disclosure and lack of novelty. In the oral proceedings the ground of opposition of Art. 100(c) was then raised, in the present case an inadmissible extension of the original patent application by a new feature, but this feature was not admitted for the proceedings. The opposition against the patent was rejected.
Appeal: failure to state reasons against the ground of opposition
In the subsequent appeal, the opponent argued that the ground of opposition should have been admitted under Article 100(c) as prima facie relevant for the maintenance of the patent; the contested decision therefore did not contain any reasoning as to relevance.
Furthermore, there was also no sufficient disclosure because there was no disclosure of a possibility to keep the coldest part in the direction of the width within the required narrow temperature range. Moreover, the opponent submitted further evidence of lack of inventiveness, although the this had never been claimed as a ground for opposition.
Fresh ground for opposition – Admission at the discretion of Opposition Division
Since the ground of opposition under Article 100(c) was raised for the first time at the oral proceedings, it was at the discretion of the Opposition Division to allow it. The Board of Appeal acknowledged the deficiency in the written decision and even expressed dismay at the Opposition Division’s brevity on the subject.
Nevertheless, the issue had been discussed at the oral proceedings and both parties had been given sufficient opportunity to respond, the Board of Appeal noted with reference to the minutes of the hearing.
The Board of Appeal also stressed that, according to T 986/93 (grounds 2.4) and T 620/08 (grounds 3.4), it may examine a late filed opposition ground which was disregarded by the Opposition Division if it considers that the Opposition Division misused its discretion in this respect.
However, that was not the case in the present case, the Board of Appeal decided that the subject-matter claimed did not go beyond the content of the application as filed. Therefore, the Opposition Division had correctly exercised its discretion not to allow the late filed fresh ground of opposition under Article 100(c), the Board of Appeal decided.
This decision also shows that a lack of reasoning in a decision doesn’t make it overtunrnable.
Sufficient disclosure under Article 100(b) EPC
According to Art. 100(b) EPC, the requirement of ‘sufficient disclosure‘ must be fulfilled as a condition for patentability. In practice, of course, the aim is always to provide a disclosure of the invention which is as incomplete as possible but still sufficient. According to Art. 100(a) EPC, the invention must be disclosed so clearly and completely that a person skilled in the art can carry it out. Accordingly, it is interesting to consider the present case with regard to sufficient disclosure, as the Board of Appeal assessed it as adequate.
In essence, the opponent claimed that a skilled person would not be able to maintain and control the coldest part of the steel sheet within the claimed, allegedly narrow, temperature range, i.e. as a target temperature up to the cooling stop temperature + 15**(o)C, by using the text passage on cooling. It is only revealed how this temperature can be measured.
However, the Board of Appeal was not convinced. It was precisely the rather extensive explanations on temperature measurement in the patent in dispute which enabled a person skilled in the art who uses such measurement techniques and has general general knowledge to keep that temperature within the required range, the Board of Appeal stated. Moreover, the opponent had not produced any evidence capable of casting doubt on that point.
The Board of Appeal dismissed the appeal
With regard to the ground of lack of novelty, which was already originally introduced into the proceedings, the Board of Appeal decided that the patent in dispute was to be regarded as new in comparison with the claimed document D1. Accordingly, no lack of inventiveness could be based on D1, but this was the only document referred to in the proceedings before the Opposition Division.
Therefore, the lack of inventiveness was not invoked in the same factual and evidential context as the novelty objection, the Board of Appeal decided. In such a case the opponent must agree to the introduction of this fresh ground of opposition (according to G10/91, see also our article Fresh ground of opposition in the appeal proceedings).
However, this agreement was not given in the present case, so the Board of Appeal dismissed the appeal in its entirety.
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Decision of EPO – Board of Appel T 1969/17
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