EP 3 811 016 B1 relates to a device for energy transfer and for energy storage in a liquid reservoir.
Brief outline of the case
Claim 1 as granted and of AR1 lacked N over D1=DE 31 08 431.
AR2 was late filed and not admitted due to prima facie problems with Art 84 and Art 123(2).
The patent was maintained according to AR3.
The opponent appealed.
In appeal, the opponent raised for the first time grounds of opposition under Art 100(b) and Art 100(c).
- The subject-matter of claim 1 of AR3 could not be carried out.
- Deletion of a feature boiled down to an intermediate generalisation.
The board’s decision
The new objections do not relate to the claims of as granted, but to claims that were amended in the opposition proceedings, and objections (a) and (b) neither relate to the amendments themselves nor were brought about by them.
New objection of added matter
For the board, G 10/91 does not discuss whether an amended patent claim in opposition or appeal proceedings may be examined in its entirety for added matter or only for added matter resulting from the amendment. In the board’s view, the latter is the case.
The board noted that in G 10/91, Reasons 19, the EBA did not refer to “amended claims” but to “amendments to the claims” which must be examined to ensure that they meet the requirements of Art 123(2).
In G 10/91, Reasons 18, the EBA stated that new grounds for opposition may not be introduced in appeal proceedings without the consent of the proprietor, inter alia because this prevents “procedural uncertainties for patent proprietors, who would otherwise have to prepare themselves for unforeseeable complications at a very late stage of the proceedings, which would entail the risk of revocation of the patent and thus an irrevocable loss of rights”.
This consideration would not be taken into account if a claim amended in opposition or appeal proceedings could be examined in appeal proceedings without the consent of the patent proprietor for the existence of added matter, even with regard to the subject matter not affected by the amendment, i.e. with regard to subject matter that was already included in the patent as granted.
Insofar as an objection of added-matter under Art 100(c) could already have been raised against the patent as granted but was not raised in opposition proceedings, the prohibition on introducing new grounds for opposition in appeal proceedings without the consent of the patent proprietor, therefore applies.
New objection of lack of sufficiency
Similar considerations apply to the ground for opposition under Art 100(b), which, in the board’s view, must also be regarded as an independent substantive rule governing the requirement of sufficient disclosure in relation to the patent as granted. In contrast to Art 123(2), Art 83 does not refer to both the European patent application and the European patent, but only to the European patent application.
In G 3/14, Reasons 76, the EBA, referring to G 10/91, also clarified that in a situation where the ground for opposition under Art 100(b) was not raised and the patent was subsequently amended, e.g. to remedy a novelty objection, an objection of insufficient disclosure in appeal proceedings without the consent of the patent proprietor may only be examined with regard to the amendment in the narrower sense, but not with regard to “the entire patent […] or […] the [entire] amended claim”.
The board was thus of the opinion that in view of G 3/14, Reasons 76, the EBA extended to the ground of opposition under Art 100(b) what it had decided for Art 84.
The claims of the patent may be examined for compliance with the requirements of Art 83 only when, and then only to the extent that the amendment introduces non-compliance with Art 83. Besides this exception, any other new objection under Art 83 can, according to G 10/91, only be raised with the proprietor’s consent.
Application to the present case
Objection (a) relates to an alleged addition of matter, which only concerns features that were already present in claims 1 and 4 as granted.
Objection( b) relates to an alleged insufficient disclosure with regard to features which were also already present in the granted version.
Since the alleged insufficient disclosure and alleged addition of matter were not brought about by amendments in the opposition proceedings, the grounds for opposition under Art 100(b) and Art 100(c) were not raised in the opposition proceedings and the proprietor did not agree to their examination in the appeal proceedings, these objections may not be examined in the appeal proceedings.
The board confirmed maintenance according to AR3.
Comments
With Reasons 76 in G 3/14 it can be agreed that what has been decided for Art 84 in G 3/14, also applies to Art 83. The argumentation relating to added matter is less convincing.
It is the proprietor’s good right not to accept the introduction in appeal of grounds of opposition not raised in first instance. Whether in the long run, it is the wisest thing to do remains debatable. The opponent can still continue and require revocation before a national court or the UPC.
If the EPO dismisses the late filed objections for substantive reasons, the patent will come out of the opposition procedure with a better presumption of validity when maintained in amended form.
The net result of a decision like the present one, is that an opponent will always raise all grounds of opposition under Art 100, even if the argumentation is dodgy or not convincing.
Whether introducing up front of far-fetched grounds of opposition, simply in order to have them in the procedure, improves the overall efficiency of opposition procedure remains to be seen.
On the procedure
The ISR carried out by the EPO only revealed 4 documents of category A.
EP 3 811 016 B1 bears, inter alia, the IPC Class F28D20/00.
The IS was carried out in the IPC classes F28D, F24S and F24T
Claim 1 as granted lacked N over D1=DE 31 08 431.
D1=DE 31 08 431 bears, inter alia, the IPC Class F28D20/00.
It is thus surprising that D1 was not found during the original search.
Comments
4 replies on “T 0644/24-Extent of the admissibility of new grounds of opposition in appeal”
“The net result of a decision like the present one, is that an opponent will always raise all grounds of opposition under Art 100, even if the argumentation is dodgy or not convincing. “–> it is the result of G 10/91. And yes, precisely for that reason, I always try do (unless the claims were literally granted without any amendment, of course).
G10/91 just sets up a trap for the unwary opponent and otherwise achieves little in terms of procedural economy.
@ Plu,
I cannot but agree with you. Bring in the lot, even if it is not worth a penny. But it is in it.
Procedural economy what does this mean? Less work for the EPO?
Not if grounds of opposition are raised even if the opponent is not convinced by those.
Of course, seen exclusively from the Board’s perspective, G10/91 allows them, on occasion, to disregard an attack. Any amount of spurious attacks introduced by the opponents in the Notice of opposition, caused solely by G 10/91, and the corresponding extra work for the opposition divisions, does not increase the workload of the BoAs (an opponent doesn’t need to carry over the spurious attack into any appeal because G 10/91 does not refer to the Statement of grounds/appeal reply of the opponent but only the first instance proceedings). Under Art. 13(1) RPBA, including one Art 83 attack in the SoG does not make it any easier to introduce a second Art. 83 later under Art. 13(1), so no need for spurious attacks in the SoG just to have the ground of Art. 83 in appeal (completely different to G10/91).
I’m unsure what the EBA in G 10/91 expected the opponent’s responsive behaviour to be, and the Boards are now bound by it unless a TBA refers a question to the EBA to revisit the matter (cf. G 1/23).
@Daniel X. Thomas,
I can only agree with @Plu : with G 10/91, it is “best practice” to raise all possible grounds of opposition except if it is literally impossible to do so.
If I remember correctly, a few BoAs have questioned (if not complained about) spurious A83 attacks in mechanical fields. They have a point, but as an attorney, you are basically obliged to submit them. The same could be said about A123(2), where some attacks are quite spurious.