Pages 626-627

BOARDS OF APPEAL

Decisions of the Enlarged Board of Appeal

Decision of the Enlarged Board of Appeal dated 19 July 1996 - G 7/95

(Official text)

Composition of the board:

Patent proprietor/Respondent: ETHICON Inc.

Opponent/Appellant: United States Surgical Corporation

Headword: Fresh grounds for opposition/ETHICON

Article: 99, 100(a), (b) and (c), 114(1) EPC

Rule: 55, 56 EPC

Keyword: "No power to examine fresh grounds for opposition without agreement of patentee"

Headnote

In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.

Summary of facts and submissions*

...

Reasons for the decision*

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7.3 Having regard to the particular facts of the case before the referring board in case G 7/95, it is not necessary for the Enlarged Board to answer the referred question insofar as it relates to a new allegation that the claims lack novelty in view of any other document than the previously cited closest prior art document.

Order

For these reasons it is decided that:

The question of law referred to the Enlarged Board of Appeal is to be answered as follows:

In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.