5.3.2 Objections of lack of novelty and inventive step

In T 135/01, the board took the view that the mere observation in the course of an opposition procedure, whether by a party or the opposition division, that the subject-matter of a claim was new having regard to the prior art did not mean that lack of novelty was thereby introduced as a ground for opposition. Thus an assessment of inventive step generally began with a determination of the point of novelty, which implied a finding that the subject-matter of the claim was new. Treating such a routine affirmation of novelty as introducing the opposition ground of lack of novelty would be tantamount to including the latter ground as an invariant concomitant of the opposition ground of lack of inventive step, which would be contrary to decision G 7/95 (OJ 1996, 626).

If a patent has been opposed on the grounds of lack of novelty and lack of inventive step and if only the ground of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is not necessary. Under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since - given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art - this would contradict the reasons in support of lack of novelty. Therefore, the objection of lack of inventive step does not constitute a fresh ground for opposition and can therefore be examined in the appeal proceedings without the agreement of the patentee (T 597/07; see also T 131/01, OJ 2003, 115).

In T 635/06 the notice of opposition specified that the patent in suit was opposed for lack of novelty and inventive step as the respective boxes of the standard EPO form had been crossed and as the notice explicitly indicated both grounds. In the circumstances of the case it was not possible for the opponent to substantiate the ground of lack of inventive step by any analysis going beyond its arguments against novelty. The opponent was thus limited to the position that a comparison of the disclosed composition and the claimed subject-matter revealed no distinguishing feature, the presence of which would, however, be necessary for a detailed objection to inventive step. Hence, the ground of lack of inventive step was considered by the board to be sufficiently addressed and, thus, properly raised in the notice of opposition.

According to the board's judgment in case T 514/04, the lack of novelty objection originally raised against claim 5, relating to a process for the preparation of a product, could not extend to the products obtained from this process, including the products to claims 1 to 4, and that consequently the lack of novelty objection raised against claims 1 to 4 for the first time before the board was a fresh ground for opposition.

In T 1959/09 the patentee (respondent) had requested the board to refer to the Enlarged Board of Appeal the question whether an existing ground of opposition raised in respect of a different independent claim amounts to a fresh ground of opposition as set out in G 10/91. In this respect, reference was made to T 514/04 (see above) where the board had stated that the extent and ground for opposition mentioned in R. 76(2)(c) EPC (former R. 55 (c) EPC 1973) were connected in the sense that a specific claim(s) is/are objected to under a specific ground or grounds. The patentee argued that it was inadmissible without the approval of the patentee to extend the opposition over and above this basic concept which defined both the extent to which the patent was originally opposed (cf. G 9/91) and the grounds originally submitted with respect to subject-matter opposed under Art. 99 (1) EPC and R. 55 (c) EPC (cf. G 10/91). In view of the fundamental importance of this question and the clear divergence between the reasoning of the board in T 514/04 as compared to the board in the present proceedings, the patentee regarded a referral to the Enlarged Board of Appeal pursuant to Art. 112(1)(a) EPC as justified.

The board did not recognise the necessity for such a referral since the ground of opposition pursuant to Art. 100 (c) EPC as well as the question whether the requirements of Art. 123(2) EPC were clearly considered in the impugned decision. In addition, the board distinguished the present case, where claims 1 and 17 of the main request both belonged to the same category and virtually included the same subject-matter, from the case in T 514/04 where the question posed was whether a ground of opposition raised against a claim to a process applied equally to a claim to a product produced by said process. Hence, T 514/04 had no bearing on the case at issue.

Finally, the board noted in passing that there was no basis in G 10/91 for the general assumption that a ground of opposition raised against an independent claim may not subsequently be raised by the opponent against another independent claim, falling within the scope of the opposition, since otherwise a new ground for opposition would thereby be introduced. According to the board, T 514/04 neither mentioned nor elucidated the relevant passages in G 10/91 which supported that assumption. Actually, G 10/91 appeared to regard a new ground for opposition as being a "ground for opposition not covered by the statement pursuant to R. 55 (c) EPC", no indication being given in that decision which would justify the inference that this should be construed far more broadly as meaning any ground of opposition in respect of a specific given claim which was not covered by the statement pursuant to R. 55(c) EPC 1973 (now R. 76(2)(c) EPC).

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