Admissibility of a fresh ground in appeal

The Respondent's requests regarding the ground for opposition under Art 100(c) EPC confront the Board with the issue of admittance of a new ground for opposition which was raised during the oral proceedings before the Opposition Division (OD) but had deliberately not been decided upon by the OD. In the absence of a positive decision on admittance by the OD, the Board considers that the ground for opposition under Art. 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 G10/91, which require the Proprietor's consent for its introduction in the appeal proceedings. In view of the appellant's refusal thereto, the ground for opposition under Article 100(c) EPC is not to be introduced in the appeal proceedings.

First instance procedure

In the appeal case at hand the opponent raised the ground for opposition under Art. 100(c) EPC against independent claim 17 for the first time during oral proceedings before the Opposition Division [OD]; i.e., the ground was not raised in the notice of opposition. The OD found claim 1 of the Main Request not novel, Auxiliary Requests 1-3 [AR1-AR3] lacked clarity and claim 1 of each of AR4 – AR6 was considered not inventive. By dealing with the merits of claim 1 before the Art. 100(c) EPC objection against claim 17 only raised during oral proceedings, the OD did not arrive at the discussion of claim 17. Neither the minutes of the oral proceedings nor the decision under appeal indicate that the OD at any later stage decided to admit the new ground for opposition.

The Appeal

In appeal the ground of added subject matter was raised again by the Respondent-Opponent (RO). The RO argued that the ground for opposition should be considered during the appeal proceedings or else by the OD following a remittal. In reaction thereto the Appellant-Proprietor [AP] denied consent to its introduction into the proceedings, because this ground was a fresh ground in appeal not raised in the notice of opposition and not admitted into the procedure by the OD. The RO responded by setting out the objection against claim 17 was prima facie relevant and not a fresh ground since the objections (note: against claim 1) were raised in the notice of opposition.

The Board’s reasoning

The Board came to the view that claim 1 as granted is novel over the prior art and involves an inventive step and assessed the merits of claim 17. The Board observed that the RO's requests regarding the ground for opposition under Art. 100(c) EPC confront the Board with the issue of admittance of a new ground for opposition raised during oral proceedings before the OD but not been decided upon by the OD.

Case Law

The principles of G10/91 apply; grounds not properly covered by the notice of opposition should only be considered by the OD if it is prima facie clear that such grounds prejudice maintenance of the patent. The Enlarged Board emphasized in G10/91 the appeal procedure is merely to give the adversely affected party a possibility to challenge the OD’s decision and not to consider grounds on which the decision under appeal has not been based. Fresh grounds may therefore not be introduced in appeal unless 1) the proprietor agrees and 2) if the Board considers the fresh ground prima facie relevant.

In the absence of a positive decision on admittance by the OD, the Board considers that the ground for opposition under Art. 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 G10/91, which require the Proprietor's consent for its introduction in the appeal proceedings. In the case at hand, the Board decided that the raised ground against claim 17 was not prima facie relevant and therefore irrespective of the consent of AP the ground was not admitted into the appeal proceedings.

Decision of the Board

The decision under appeal was set aside and the patent maintained as granted.