2.2. Formal requirements for opposition and filing in due time
2.2.7 Statement of grounds for opposition
The notice of opposition must also state the grounds on which the opposition is based (R. 76(2)(c) EPC; R. 55(c) EPC 1973). The grounds for opposition which can form the legal basis of an opposition are contained in an exhaustive list in Art. 100 EPC. Accordingly, an opposition may only be filed on the grounds that (a) the subject-matter of the European patent is not patentable under Art. 52 to 57 EPC, (b) the European patent does not sufficiently disclose the invention or (c) the subject-matter of the European patent goes beyond what was originally disclosed.
The Enlarged Board set out a number of fundamental principles in G 1/95 (OJ 1996, 615):
Whereas the grounds for opposition in Art. 100(b) and (c) EPC 1973 each relate to a single, separate and clearly delimited legal basis on which an opposition can be based, i.e. insufficient disclosure or unallowable amendment before grant, the same does not apply to Art. 100(a) EPC 1973. Art. 100(a) EPC 1973 not only refers to the general definition of patentable inventions under Art. 52(1) EPC 1973 and the exceptions to patentability under Art. 53 EPC 1973; it also refers to a number of definitions given in Art. 52(2) to (4) EPC 1973 and Art. 54 to 57 EPC 1973 for the terms "invention", "novelty", "inventive step" and "industrial application", which, when used in conjunction with Art. 52(1) EPC 1973, set specific requirements and therefore constitute separate grounds for opposition. Taken together, Art. 52 to 57 EPC 1973 therefore do not, for the purposes of Art. 100(a) EPC 1973, constitute a single objection to the maintenance of the patent, but a collection of different objections. Some of these are completely independent of each other (e.g. Art. 53 EPC 1973 and Art. 52(1) EPC 1973, Art. 54 EPC 1973) whereas others might be more closely related (e.g. Art. 52(1) EPC 1973 and Art. 54 EPC 1973; Art. 52(1) EPC 1973 and Art. 56 EPC 1973). For an opposition to be admissible under Art. 100(a) EPC 1973, it has to be based on at least one of the grounds for opposition set out in Art. 52 to 57 EPC 1973.
According to the reasoning of G 1/95, one function of R. 55 and 56 EPC 1973 (R. 76 and 77 EPC) is to establish what the notice of opposition has to contain in order to be admissible. R. 76(2)(c) EPC specifies that the notice of opposition has to contain a statement of the extent to which the European patent was opposed and of the grounds (i.e. the legal reasons mentioned above) on which the opposition is based and an indication of the facts, evidence and arguments presented in support of these grounds, i.e. the substantiation. The wording of (c) shows clearly the distinction made between the grounds, meaning the legal reasons or legal bases, such as those under Art. 100(a) EPC, and the substantiation. Accordingly, in the context of Art. 99 and 100 EPC and of R. 76(2)(c) EPC, a "ground for opposition" has to be interpreted as meaning an individual legal basis for an objection to the maintenance of a patent. It follows in particular that Art. 100(a) EPC contained a collection of different legal objections (i.e. legal bases), or different grounds for opposition, and is not directed to a single ground for opposition.
Non-compliance with Art. 84 EPC is not a ground for opposition, but is a matter to be considered in the context of Art. 101(3) EPC (see also G 3/14, OJ 2015, A102 and in this chapter IV.C.5.2.2).
In T 600/08 the board observed that the EPC did not provide for reviewing, as part of opposition proceedings, the legality of a decision by the Receiving Section to correct an applicant's name in a divisional application. The grounds for opposition were set out exhaustively in Art. 100 EPC. Objections to the text of a patent as granted could not be raised on other grounds. It made no difference that the text of the patent in suit had been amended.
- T 1065/23
In T 1065/23, claim 10 of the first auxiliary request, which became the main request, defined a pea protein extract obtainable by the method of claims 1 to 9..
The board noted that the method of claim 1 was characterised by a step in which a precipitated pea protein contained in a slurry having a pH of 4.0 to 5.8 was subjected to a specific heat treatment. As shown in Examples 2 and 3 of the opposed patent, pea protein extracts subjected to this step had a significantly lower nitrogen solubility index, gel strength and viscosity than those which were heated at a different pH or were kept at the claimed pH but were not subjected to the claimed heating step. Moreover, Examples 4 and 5 showed that protein extracts obtained by the claimed method, which had these physicochemical properties, had better wine-fining and baking properties. For example, they allowed a reduction of the water content in the dough used to prepare biscuits, while preserving or even improving sensory properties.
Opponent 2 argued among other things that claim 10 had to be rejected because its product-by-process format was, as such, not allowable. The claimed product could be described by specific features defining e.g. its properties. Citing decision T 150/82 and section F-IV, 4.12 of the Guidelines, opponent 2 submitted that the product-by-process format could only be used if it was impossible to claim/define the product other than in terms of a process of manufacture. It argued that, assuming that the product obtainable by the method of claim 1 had low solubility, gel strength and viscosity, these parameters could and should have been used to define that product. Hence, the criteria for drafting a product-by-process claim were not fulfilled, and claim 10 should not be allowed.
The board did not agree with these conclusions. It held that the mere fact that claim 10 was drafted as a product-by-process, despite the fact that the claimed product could be satisfactorily defined by reference to its composition, structure or other testable parameter, is not a ground for opposition set out in Art. 100 EPC. The issue could be, at most, one of a lack of clarity. Section F-IV, 4.12 of the Guidelines mentioned by opponent 2 indeed related to the requirement of clarity. Furthermore, decision T 150/82 related to an appeal against the refusal of a patent application and not to an appeal concerning an opposition filed against a granted patent. Consequently, this decision was not applicable.
For these reasons, the board held that considering that claim 10 was a granted claim, its format could not be objected to on the ground that it was drafted in the product-by-process format or that it lacked clarity (G 3/14).