2.3.2 Ground for opposition under Article 100(c) EPC

In T 475/02 the board had to decide whether the patent application 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 stated that the first test under Art. 100(c) EPC was governed by Art. 123(2) EPC, and the second by Art. 76(1) EPC. The board held that the wrong reference 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.

In T 1975/09 the board held that Art. 100(c) EPC – and not Art. 76(1) EPC – would have been the correct provision to cite in the decision of the opposition division when the claims of the granted patent were considered. With respect to amendments made to the claims in the course of the opposition proceedings, Art. 101(3)(a) and (b) EPC required the opposition division to form an opinion on whether or not the patent and the invention to which it related met the requirements of the Convention. Art. 76(1) EPC related to a requirement for filing a divisional application, which was not a requirement under the Convention for an (amended) patent. Therefore, the requirement of Art. 123(2) EPC, although not explicitly referring to the content of the "earlier application(s)", was the corresponding requirement of the Convention within the meaning of Art. 101(3) EPC, to be met by the patent in relation to amendments made thereto, with respect to the content of the earlier and of the divisional application(s) as filed.

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