2.2.8 Indication of facts, evidence and arguments – substantiation of grounds for opposition
In T 1279/05, the board held that it was not absolutely necessary to cover every single feature of the opposed patent claim so long as the notice of opposition dealt with the essence of the invention defined in that claim (see T 134/88 and T 1097/98). See also T 114/07.
In T 534/98 the board held that evidence of the common general knowledge was not required to substantiate an opposition. In accordance with the prevailing view in the case law, proof that something belonged to the common general knowledge was only necessary if this was called into question by another party or by the EPO.
In T 1074/05, the arguments in the notice of opposition were concise and made no reference to relevant sources in citation D5. The board, however, considered that such references were unnecessary in the case in hand because D5 was a short document disclosing a technically straightforward communication system in a similarly abstract fashion to the contested patent.
Similarly, in T 1014/09 the board, considering the facts of the case in issue and the accompanying legal analysis set out in the notice of opposition, held that the general reference to the original disclosure in the notice of opposition could be regarded as a due indication within the meaning of R. 55(c) EPC 1973 (R. 76(2)(c) EPC).
In T 185/88 (OJ 1990, 451) the board ruled that grounds for opposition are deemed to be in due form if the only document cited in support of the sole assertion of lack of inventive step (here: German patent specification), while itself published after the date of filing or priority, nevertheless contained a reference to a document published before the date of filing or priority (here: German unexamined application or "Offenlegungsschrift"). See also T 205/08.
In T 864/04 the board had to examine whether the express mention of document D1a in the notice of opposition in relation to D1 by the statement: "(divided out inter alia of US-PS No. 5,290,583)" was sufficiently precise to enable the patentee to find out the date of the publication of this document. In the Board's view, this was indeed the case because no undue burden was involved to discover D1a's publication date.
In T 623/18 the board guarded against a too strict approach. The board emphasised the purpose of the statement under R. 76(1) EPC and R. 76(2)(c) EPC, as explained in G 9/91 and G 10/91 (OJ 1993, 408 and 420), namely to define the extent and scope of the opposition and the legal and factual framework, within which the substantive examination of the opposition is in principle conducted, as well as to give the patentee a fair chance to consider his position at an early stage of proceedings. The board saw no basis for making admissibility of the opposition dependent on the assessment of substantive questions, in particular on whether an objection merely related to a lack of clarity or could support the ground for opposition under Art. 100(b) EPC. It was also a matter of substantive examination to characterise the person skilled in the art, for whom, according to Art. 100(b) EPC, the description should be sufficiently clear and complete, and for whom obviousness over the prior art was to be assessed according to Art. 100(a) EPC in combination with Art. 56 EPC.