Key points
- Credits to T. Schürmann and M. Wachenhausen for highlighting this decision in epi Information 3/2022.
- The Board, in translation: "It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed."
- "However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion"
- As a comment, it would be useful if the Board had identified the legal basis for this discretion. Article 114(2) EPC only refers to facts or evidence not submitted "in due time".
- However, in the present case, the OD's had not correctly exercised this discretion.
- The opponent had presented two inventive step attacks in the Notice of opposition, one starting from F3 and the other from F5. The OD in the preliminary opinion considered F4 to be the closest prior art.
- During the oral proceedings, the OD had decided that F5 was the closest prior art and had forbidden the opponent to present arguments regarding its attack starting from F3. In the written decision, the attack starting from F5 as well as the attack starting from F3 was considered by the OD." In the case of document F3, [the OD] only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines"
- ""When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
- "Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
- The Board: "the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons." "In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify denial to the [opponent] to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent on those points before the opposition was rejected, constitutes a violation of the right to be heard"
EPO
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/2022/12/t-261019-too-many-inventive-step-attacks.html
