The patent relates to an “Arrangement and method for the contrast improvement in a charged particle beam device for inspecting a specimen”
Brief outline of the case
The opponent appealed the rejection of its opposition.
The board confirmed the rejection of the opposition.
The whole discussion turned about the relevance of E2=EP 1 068 630.
The case is interesting in that it clarifies the admissibility an appeal, as well as admissibility of an opposition.
Admissibility of the appeal – The proprietor’s position
According to the proprietor, the opponent based its appeal exclusively on new arguments and new attacks that had not been presented during the first-instance proceedings, either in writing or during the OP, and that had therefore also not been considered in the decision under appeal. These arguments were late-filed. Accordingly, the appeal – including only late-filed arguments and attacks – was to be rejected as inadmissible.
Document E2 was interpreted differently in the statement setting out the grounds of appeal from its interpretation during the opposition procedure.
As a consequence, certain features of the claim were mapped to completely new features of document E2, so that a wholly fresh case was presented on appeal. The new line of argument was also not prima facie relevant.
In addition, the proprietor submitted that no reasons had been provided as to why this new line of argument had been presented now and not earlier, during the opposition proceedings.
Finally, the proprietor submitted that the new line of argument was actually an objection concerning novelty and not an objection concerning inventive step.
Since inventive step was the only ground of opposition raised during the opposition proceedings, the newly-raised objection, even if presented as being a lack of inventive step, concerned novelty and consequently presented a new ground which should not be admitted into the proceedings.
Admissibility of the appeal – The opponent’s position
The opponent pointed out that document E2 had been discussed throughout the opposition proceedings. The different interpretation of certain features was a reaction to the impugned decision.
Admissibility of the appeal – The board’s position
The board observed that the proprietor did not present any formal legal basis for its argument that the new and arguably inadmissible attack directly leads to inadmissibility of the appeal.
The board was not convinced that, apart from the factual basis, the argument is correct in law.
The board was not aware of any legal provision, either in the EPC or in the RPBA, which would stipulate inadmissibility of the appeal as the legal consequence where no attacks remain in the appeal as a result of their non-admission.
Nor is this supported by the case law.
The fact that attacks presented in the appeal may not be admitted in the course of examination of the appeal does not lead to the retroactive finding that the appeal was not reasoned and hence inadmissible, but at most to the dismissal of the appeal.
Whether the reasons are suitable for achieving the purpose of the appeal is a question of allowability and not admissibility, at least as long as such reasons are not manifestly insufficient or irrelevant.
The board’s possible finding on the non-admittance of the attack is based on the board’s discretionary powers. By contrast, the usual admissibility conditions of an appeal are stipulated by specific legal provisions, normally requiring that the board examine these conditions ex officio.
The board’s finding on the admissibility of the appeal is not a discretionary decision, but follows directly from the letter of the law. However, this question need not be decided in the present case, as the board refrained from not admitting the argued new attack.
The board held that the opponent had not based its appeal on a different (new) ground for opposition. In the statement setting out the grounds of appeal, the opponent raised the ground of lack of inventive step and not of lack of novelty, in line with the opposition procedure.
Although it seems that the objection made is in substance comparable to a novelty objection, the appellant did not formally raise a new ground. The appeal can thus not be dismissed on that basis. The board also referred to the Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.2.6.4 a).
The board was of the view that the line of argument presented by the opponent for the first time in the statement setting out the grounds of appeal is prima facie relevant to the outcome of the appeal, contrary to the proprietor’s submission.
Furthermore, it is based on the same evidence that was considered, during the opposition proceedings, as representing the closest state of the art, namely document E2. That is, neither the ground for opposition nor the evidence has changed.
The fact that the opponent interprets document E2 in its statement setting out the grounds of appeal differently from the way it was interpreted in the opposition proceedings is not sufficient to consider the new line of argument as being late-filed. On the contrary, the allegation of lack of novelty in view of the closest prior-art document E2 can be considered in the context of deciding upon the ground of lack of inventive step as set out in decision G 7/95, OJ 1996, 626, Headnote.
The opponent in its statement setting out the grounds of appeal presented a discussion concerning the interpretation of a specific feature of E2 in the context of the claim. The OD expressed an opinion on this feature and the opponent responded thereon. The new line of argument is thus a direct response to the decision of the OD.
For those reasons, the board saw no reason to hold inadmissible the opponent’s line of argument with respect to E2. It is thus part of the proceedings and must be taken into account by the board.
As the appeal was dismissed, the line of arguments of the opponent in appeal was not considered convincing by the board.
Admissibility of the opposition – The OD’s position
In the notice of opposition, document E2 was indicated by a number, EP 1 068 360 and a name, “Essers”. From the reasoning in the notice of opposition, it was apparent beyond any doubt that E2 concerned a scanning electron microscope. EP 1 068 360, i.e. E2, as indicated in the notice of opposition, concerned a method and device for quantifying DNA and RNA. This was immediately apparent as an error, the subject-matter concerning quantification of DNA being too far away from scanning electron microscopes.
For the OD it was decisive that the proprietor was in a position to retrieve the correct publication number of E2 in a patent database by using the name “Essers” as the name of the inventor of E2 and a database query such as “scanning electron microscope”, and thus without needing to undertake further investigations.
The OD also cited decision T 344/88, in which it had been concluded that it would be taking formal requirements too far to reject the opposition simply because the wrong number had been given for a cited patent specification.
Admissibility of the opposition – The board’s position
R 76(2,c) merely requires an indication of the facts and evidence presented in support of the argued grounds for opposition, but not necessarily every piece of evidence need already be presented along with the notice of opposition.
For an admissible opposition it is normally sufficient that the indications given in the notice of opposition permit the substantive content of the offered evidence to be established only at a later stage, provided that this substantive content can be established without undue effort and still within a reasonable time.
The correct document E2 is easily selected from Espacenet without excessive investigations using the expression “Essers” and the additional information that E2 deals with an “electron microscope”, or even simply a “microscope”.
The OD was thus right in considering the opposition admissible.
Since the opposition was admissible as E2 could easily be identified, the board must also dismiss the argument that the appeal is inadmissible on the basis of this argument.
It is always tempting for a proprietor to have the opposition and a subsequent appeal of the opponent to be deemed not admissible, as it avoids any decision on the substance.
Here the proprietor went a trifle too far, as it challenged the admissibility of the opposition and of the appeal.
Admissibility of the opposition
To be admissible, an opposition need not to be well founded, it just has to be plausible.
Facts and evidence supplied should be such that the opponent’s case can be understandable by the proprietor and the division without any further investigations, cf. T 222/85, T 2/89, T 550/88.
With the present decision, without “any” further investigations can be extended to without “hardly any substantial or lengthy” further investigations.
Admissibility of the opposition was challenged in view of a typographic error in the number of the patent mentioned in the statement of ground of opposition EP 1 068 360 instead of EP 1 068 630. Refusing the admissibility of the opposition for such a futile reason is a no-go.
In general, documents do not have to be annexed to the statement of grounds of opposition, but can be filed later, possibly after a request from the OD under R 83.
At the latest when the proper document would have been filed under R 83, the typo would have become apparent.
As a further example, the name of a witness does not have to be given in the statement of grounds of opposition, but can be filed letter.
In T 1428/19, Reasons 2, the board held that “Interpretation of the claim wording and in particular of the individual terms and expressions used therein is required in order to evaluate novelty and inventive step. Whether the opponent makes use of the same interpretation as that proposed by the patent proprietor and as adopted by the opposition division might have an influence on the success of the opposition, but plays no role in assessing the admissibility of the opposition.”
Admissibility of the appeal
An appeal is admissible if it deals with the reasons of the impugned decision. See R 99(2) and Art 12(3) RPBA20/21. This was manifestly the case here. Admissibility of an appeal and admissibility of lines of attack in appeal are two distinct requirements. The first is not a discretionary decision of a board, the second is.
In T 1099/16, Reasons 3.1, it was held that ”As long as the opponent 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 R 99(2) is generally considered to be met.” In T 1099/16, the opposition had been rejected by the OD.
The interesting conclusion in the present case: giving a different interpretation to some features discussed in the OD’s decision cannot be considered as a new line of arguments. It is in any case not possible to say that the opponent has not attempted to demonstrate why the OD’s decision should be set aside. This is enough to render the appeal admissible.
In the present case, it did not help the opponent as the appeal was dismissed and the patent maintained as granted.