Legal framework
The notice of opposition must state the extent to which the European patent is opposed, the grounds of opposition, and the facts and evidence supporting those grounds: Rule 76(2)(c) EPC.
The extent of opposition is important. If the opposition is limited to only part of the patent, the opposition division must limit its examination to that part. In particular, it cannot revoke the patent beyond the extent to which it was opposed. The exception concerns dependent claims: if an opposed independent claim falls, dependent claims may also be examined if their validity is prima facie in doubt. This follows from G 9/91 and is reflected in Guidelines D-V, 2.1.
Fresh grounds of opposition are also treated carefully. As a general rule, the opposition division examines the grounds raised by the opponent. However, under Rule 81(1) EPC and Article 114(1) EPC, it may examine grounds not invoked by the opponent if they would prejudice maintenance of the patent. The Guidelines state that the opposition division may go beyond the original framework if prima facie maintenance of the patent is prejudiced: Guidelines E-VI, 2.1 and D-V, 2.2.
Here, novelty is a fresh ground of opposition, because the notice of opposition attacked claim 1 only for lack of inventive step. G 7/95 confirms that a novelty objection is a fresh ground where the patent was opposed only for lack of inventive step.
Document Dn is also late-filed, since it is presented only at the beginning of oral proceedings. Under Article 114(2) EPC, the EPO may disregard late-filed facts or evidence. Under Rule 116(1) EPC, new facts and evidence filed after the final date set in preparation for oral proceedings need not be considered.
Statement a)
False.
The opposition division will not revoke the patent in full.
The notice of opposition was limited to claim 1 only. Claim 2 is another independent claim, not a dependent claim of claim 1. Therefore, claim 2 is outside the extent of the opposition.
Under G 9/91 and Guidelines D-V, 2.1, the opposition division cannot revoke the patent beyond the extent to which it was opposed. The request for revocation of the patent in its entirety must therefore fail at least as regards independent claim 2.
Statement b)
True.
Claim 1 is within the extent of the opposition. The opposition was directed against claim 1, even though the original ground and reasoning concerned lack of inventive step.
The new novelty objection based on Dn is a fresh ground of opposition under G 7/95, and Dn is also late-filed evidence. The opposition division must therefore assess whether the new document and the fresh novelty objection are prima facie relevant, i.e. whether they appear to prejudice maintenance of the patent as granted. This follows from Article 114(1) and (2) EPC, Rule 81(1) EPC, Rule 116(1) EPC, and G 10/91.
Statement c)
False.
Claim 2 is outside the extent of the opposition. O did not oppose claim 2 in the notice of opposition. Since claim 2 is an independent process claim, it is not implicitly covered by the opposition against independent product claim 1.
The exception in G 9/91 concerns dependent claims whose independent claim falls. It does not allow the opposition division to extend the opposition to a separate, unopposed independent claim. See Guidelines D-V, 2.1.
Therefore, the opposition division will not assess the prima facie relevance of Dn against claim 2.
Statement d)
False.
The opposition division is not barred from considering Dn merely because the patentee does not agree.
The proprietor’s agreement is decisive for introducing a fresh ground in appeal proceedings, as confirmed by G 7/95. But this case is still before the opposition division, i.e. at first instance. At first instance, the opposition division may consider a fresh ground of its own motion if it is prima facie relevant and appears to prejudice maintenance of the patent. This follows from Rule 81(1) EPC, Article 114(1) EPC, and G 10/91.
The patentee must, however, be given a proper opportunity to comment under Article 113(1) EPC if the new ground or document is admitted.
Exam tip
Always separate three questions in opposition:
First, ask what is the extent of the opposition under Rule 76(2)(c) EPC. A claim outside that extent, especially a separate independent claim, is normally untouchable.
Second, ask whether the new objection is a fresh ground. Lack of novelty is a fresh ground if the original opposition was based only on lack of inventive step: G 7/95.
Third, distinguish first instance from appeal. In first-instance opposition, the opposition division may consider a fresh ground if it is prima facie relevant. In appeal, a fresh ground normally requires the proprietor’s consent.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.