Key points
- The Board decides that " that the ground for opposition under Article 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 G 10/91" (i.e. only admitted with the consent of the patentee) in cases wherein "[the ground] was raised during the oral proceedings before the opposition division but had deliberately not been decided upon by the opposition division".
- The OD found claim 1 to be not novel and, by dealing with novelty before the Art.100(c) attack against independent claim 17, did not arrive at the Art. 100(c) attack (in particular because claim 1 as amended in the auxiliary requests was found to be obvious and the patent was revoked by the OD on those grounds).
- I note that this actually a quite important decision because there seems to be no case law on the point.
- Bostedt in Singer/Stauder/Luginbühl, 8th ed., Art. 101, note 61 writes: "Umstritten ist die Behandlung der Fälle, in denen die Einspruchsabteilung ihr Ermessen dahingehend ausgeübt hat, den neuen Einspruchsgrund nicht in das Verfahren zuzulassen." Hence, in case the OD holds the new ground inadmissible based on the wrong principles, the Board can admit the new ground, according to one line of case law.
- The present decision suggest that if the OD does not decide on the admissibility of the ground at all, the Board may not admit it without the consent of the patentee.
- The Board in the present case: "However, in the absence of a positive decision on admittance by the opposition division, the Board considers that the ground for opposition under Article 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 G 10/91, which require the proprietor's consent for its introduction in the appeal proceedings."
EPO T 0077/18 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-007718-fresh-grounds-in-appeal.html
