T 0448/89 (Stimulating electrode) of 30.10.1990

Summary of Facts and Submissions

I. The respondent is proprietor of European patent No. 0 115 778 (application No. 84 100 160.5). Claim 1 of this patent reads as follows:

"1. An electrode for medical applications, particularly but not exclusively an implantable stimulating electrode, characterised in that it consists of an electrically conductive carrier material and in the active region is provided with a porous layer made of a carbide, nitride or carbonitride of at least one of the metals titanium, vanadium, zirconium, niobium, molybdenum, hafnium, tantalum or tungsten." Claims 2 to 6 are dependent on Claim 1.

II. The appellant filed notice of opposition against this patent and requested that "the patent be revoked in its entirety because the subject-matter of the European patent is not patentable under Articles 52 to 57 EPC". It based its request on the following grounds for opposition:

"The subject-matter of European patent No. 0 115 778 was not patentable at the priority date since the subject-matter according to current Claim 1 was no longer new. An electrode of this kind is described in EP-B1-0 054 781, columns 1 and 2. In the alternative, reference is made with regard to lack of inventive step to the other prior publications found by the EPO and referred to as citations."

All other comments made in the statement of grounds for appeal relate solely to the claims dependent on Claim 1.

III. The Opposition Division rejected the opposition, although in addition to commenting on the substance it noted - in response to an objection by the respondent (patent proprietor) that the notice of opposition was not sufficiently substantiated within the meaning of Rule 55(c) EPC - that the notice of opposition had to be regarded as admissible. The fact that EP-B1-0 054 781 cited by the opponent had been published at a later date did not prejudice the admissibility of the notice of opposition because it was common knowledge that every "B" document published by the European Patent Office was preceded by an "A" document, details of which the EPO could readily ascertain.

IV. The appellant (opponent) filed notice of appeal against that decision.

V. In its reply to the statement of grounds for appeal, the respondent (patent proprietor) continued to question, inter alia, the admissibility of the notice of opposition because it lacked the verifiable information necessary for an objective understanding of the opponent's argument.

VI. Oral proceedings were held.

VII. At the end of the oral proceedings, the appellant (opponent) requested that the contested decision be set aside and European patent No. 0 115 778 be revoked. The respondent (patent proprietor) requested that the appeal be dismissed.

VIII. In support of its request, the appellant put forward the following main arguments with regard to the disputed admissibility of its notice of opposition:

(a) When the notice of opposition talks of an electrode "of this kind", it is immediately clear that what is meant is the electrode defined in Claim 1, which represents a simple subject- matter.

(b) An Opposition Division can be assumed to have the capabilities of a reasonably skilled person who is able to pick out what is useful in a document. Although the cited passages (columns 1 and 2) in EP-B1-0 054 781 describe, in addition to the invention, two different subject-matters which were already known, relating the claim's features to the aforementioned evidence and arguments would not give rise to any confusion since the skilled person knows that prior art acknowledged in a patent specification forms the generic part of the claimed invention.

(c) In a European search report an X or Y coding is sufficient to identify a document's relevance with regard to lack of novelty or inventive step. It is unreasonable to ask more of the opponent than of the Office.

(d) In the circumstances described above, the Opposition Division could readily ascertain the similarity between the subject-matter of Claim 1 of the contested patent and the cited state of the art.

(e) Since the ground given in support of lack of inventive step in the notice of opposition begins with the words "In the alternative", it automatically includes the preceding arguments. Moreover, a brief statement of the ground is warranted because lack of novelty covers lack of inventive step.

IX. The respondent (patent proprietor) replied essentially as follows:

(a) The appellant's notice of opposition contains no "facts" within the meaning of Rule 55(c) EPC. As a result the opponent's submission cannot be "properly understood on an objective basis", and the present notice of opposition must be rejected as inadmissible under Rule 56(1) EPC in the light of both Board of Appeal decision T 222/85 and the requirement laid down in the Guidelines for Examination in the European Patent Office, Part D, Chapter IV - 1.2.2.1(f), according to which it must be possible for "the Opposition Division to examine the alleged ground for revocation without recourse to independent enquiries".

(b) The task of relating the 24 different alternatives of Claim 1 of the contested patent to the numerous different technical facts contained in the cited state of the art with a view to verifying the alleged lack of novelty must be regarded as requiring an unreasonable independent enquiry on the part of the Opposition Division, particularly as the alleged similarities between the features are by no means obvious to the skilled reader. Since it is not possible to relate one to the other, the alleged ground for opposition cannot be verified and therefore cannot be assessed substantively.

(c) Since lack of novelty and lack of inventive step are based on different facts, a skilled person would not establish a substantive link between the appellant's arguments with respect to novelty and its objection, made in the alternative, of lack of inventive step. Thus, with regard to lack of inventive step given as a ground in the appellant's notice of opposition, not only is the indication of the facts required by Rule 55(c) EPC missing but also the indication of the evidence and arguments required by the same rule.

Reasons for the Decision

1. The appeal is admissible.

2. Under Article 101 EPC, the grounds for opposition have to be examined only if the notice of opposition is admissible. The question whether a notice of opposition must be rejected as inadmissible under Rule 56(1) EPC because it does not meet the minimum requirements of Article 99(1) EPC - "Notice of opposition shall be filed in a written reasoned statement" - and Rule 55(c)

- the notice of opposition must contain, inter alia, "an indication of the facts, evidence and arguments presented in support of these grounds" - can only be decided in the context of the particular case (cf. T 222/85, OJ EPO 1988, 128).

3. In the present case, the ground for opposition given in the notice of opposition was that the subject-matter of the contested patent was not patentable within the terms of Articles 52 to 57 EPC (Article 100(a) EPC).

In support of that ground it was merely stated that the subject- matter of Claim 1 was not new or at the least did not involve an inventive step since "an electrode of this kind is described in EP-B1-0 054 781, columns 1 and 2" and "in the alternative, reference is made with regard to lack of inventive step to the other prior publications found by the EPO and referred to as citations".

This is not sufficient in the present case.

4. The Opposition Division was right in saying that the mere fact of citing a subsequently published document (in this case: EP-B1- 0 054 781) does not necessarily rendera notice of opposition inadmissible if that document allows a previous publication at least containing the same information (in this case: EP-A1- 0 054 781) to be found without difficulty (T 185/88, OJ EPO 1990, 451).

However, the passages in the prior publication EP-A1-0 054 781 corresponding to the passages in EP-B1-0 054 781 mentioned by the appellant describe three different subject-matters, viz. the porous electrodes known from US-A-4 011 861, the tubular electrode known from US-A-3 476 116 and the subject-matter of the European patent application itself. Since lack of novelty presupposes the presence of all the claimed features in one and the same known subject-matter, it should at the very least have been indicated which of these three known subject-matters was prejudicial to the novelty of the contested patent. The appellant's argument that the state of the art cited in a patent specification always forms the preamble to an independent claim in the patent in question is wrong. If several different subject-matters from the state of the art are mentioned in a patent specification (in this case: electrodes assembled differently), the preamble to the claim can only be correctly based on one of these subject-matters. Furthermore, knowledge of the preamble's features is not on its own enough to substantiate lack of novelty for the claim's entire subject-matter.

The requirement under Rule 55(c) EPC that the facts presented in support of the grounds be indicated in a notice of opposition is therefore not met if several different subject-matters are described in a document cited as novelty-destroying and it is neither indicated nor readily recognisable which of them is supposed to incorporate all the features of a contested claim. Moreover, in the present case, Claim 1 of the contested patent comprises 24 different combinations of materials, whilst citation US-A-4 011 861 mentions 13 different materials for porous outer layers on a conductive carrier and EP-A1-0 054 781 describes at least 63 possible combinations of materials in the passages mentioned. It cannot therefore be said, as the appellant contends, that relating the claim's features to those known from EP-A1-0 054 781 could "not give rise to any confusion". The facts adduced in support of the cited ground for opposition - lack of novelty - have not therefore been given since there is no indication which of the 24 combinations of features claimed in Claim 1 of the contested patent is or are supposedly already known.

5. As regards the other ground for opposition put forward, namely that the subject-matter of the contested patent does not involve an inventive step, neither the facts (in this case: which groups of features in Claim 1 of the contested patent were supposedly already known separately) nor the evidence and arguments have been indicated. A general reference to all the documents mentioned in the European search report (seven patent applications, two specifications and a passage from a publication) is insufficient. What should have been indicated for at least one of the alternative combinations of features in Claim 1 is which group of features in that combination was supposedly already known from which document. Only then would the patent proprietor be able to counter the arguments put forward, and only then could the department charged with examining the opposition make the necessary appraisal enabling it to judge whether an inventive step was involved. Therefore, the requirement under Rule 55(c) EPC that the evidence and arguments in support of the facts presented be indicated in the notice of opposition is not met if it is neither indicated nor readily recognisable which of several documents mentioned therein is supposed to prove which fact presented.

6. Since the above-mentioned deficiencies in the notice of opposition were not remedied by the time the opposition period expired, the notice of opposition must be rejected as inadmissible under Rule 56(1) EPC.

7. With regard to the appellant's objection that the EPO is itself content to indicate categories "X", "Y", etc. in its search report, it should be noted that the European Patent Convention's regulations on the content of the search report - in particular Article 92(1) EPC in conjunction with Rule 44(1) and (2) EPC - stipulate only that documents to be taken into consideration should be "mentioned", without specifying which criteria are to be applied in identifying the relevant parts of the documents cited. On the other hand, substantiating a ground for opposition under Rule 55(c) EPC is part of the obligation stemming from Article 99(1) EPC to give reasons for the opposition. The requirements applicable to a search report and a notice of opposition are thus subject to different legal provisions and are not comparable.

8. As the notice of opposition has been found to be inadmissible, the Board is barred by Article 101 EPC from examining whether any of the grounds for opposition laid down in Article 100 EPC prejudices the maintenance of the contested patent.

ORDER

For these reasons it is decided that:

1. The contested decision is set aside.

2. The notice of opposition is rejected as inadmissible.