2.3.2 Two distinct grounds for opposition under Article 100(c) EPC

In T 475/02 the board had to decide whether the patent fulfilled the requirements of Art. 100(c) EPC. Since the opposed patent was granted on a divisional application, for the subject-matter of any claim as granted to be allowable, it had to pass both of the two tests of this provision: (i) the subject-matter must not extend beyond the content of the divisional application as filed; and, (ii) it must not extend beyond the content of the earlier application as filed. Whether the first test was passed depended only on the particular claim and on the content of the divisional application as filed. That the subject-matter of a claim passed the second test did not necessarily mean that it passed the first, and vice versa. The two tests needed separate consideration, in particular where the divisional application as filed did not include the complete text (both description and claims) of the parent application.

In T 806/03 the opposition division had applied the first test of Art. 100(c) EPC to "the application as originally filed, which is the parent application" and decided that Art. 123(2) EPC had not been complied with. The board held that the reference to the wrong provision made no difference with regard to the substance of the opposition division's decision, since the descriptions of the parent application and of the divisional application as filed were identical.

In T 2233/09 the board held that Art. 100(c) EPC contained two distinct legal grounds: Art. 76(1) EPC and Art. 123(2) EPC. Since no objections with respect to Art. 76(1) EPC had been raised during the opposition proceedings, such a new legal ground could be introduced in the appeal proceedings only with the consent of the patent proprietor.