T 1138/98 () of 20.12.1999

Summary of Facts and Submissions

I. European patent No. 620 673 was opposed by the present appellant on the ground that the subject-matter of claim 1 lacked novelty having regard to the disclosure of each of two documents:

D1: EP-B-74 422

D2: DE-C-3 634 939

II. In its decision the Opposition Division found that the subject-matter of claim 1 was novel.

III. The appellant has appealed against this decision and requests revocation of the patent. In the statement of grounds of appeal it is argued that the Opposition Division was in error in basing its decision on the issue of novelty. Although the notice of opposition only referred explicitly to novelty, it was evident that inventive step was in fact meant; there had merely been a use of incorrect terminology. It had never been argued that all features of claim 1 were known from either D1 or D2 alone. The implication rather was that the features of the preamble of claim 1 were known from the state of the art and the characterising feature was known from both D1 and D2. Thus, although inventive step was nowhere explicitly mentioned it was clear that this was de facto what was meant.

IV. The patentee in response argued that only novelty had been discussed in the opposition proceedings and referred to the decision of the Enlarged Board of Appeal G 10/91, OJ EPO 1993, 420, which stated that only those grounds for opposition already cited at the opposition stage could be considered on appeal unless the patentee consented. The response included the statement that "the patent proprietor does not consent with the ground for opposition under A 100(a) in conjunction with A 56 EPC".

V. Claim 1 of the patent reads as follows:

"1. A method for making a lithographic printing plate from an original containing continuous tones comprising the steps of

- screening said original to obtain screened data

- image-wise exposing a lithographic printing plate precursor according to said screened data, said lithographic printing plate precursor having a flexible support carrying a surface capable of being differentiated in ink accepting and ink repellant areas upon said image-wise exposure and an optional development step and

- optionally developing a thus obtained image-wise exposed lithographic printing plate precursor characterized in that said screening is a frequency modulation screening."

Reasons for the Decision

1. The primary issue before the Board is whether the ground of inventive step was raised in the opposition proceedings and may therefore be raised in the present appeal.

2. In decisions G 1/95 and G 7/95, OJ EPO 1996, 615 and 626, the Enlarged Board of Appeal held that the expression "grounds for opposition" under Article 100 EPC must be interpreted as meaning an individual legal basis for objection to the maintenance of a patent. Article 100(a) EPC was therefore held to contain a collection of different legal objections, or different grounds for opposition, so that novelty and inventive step were to be considered as different legal objections having a different legal basis.

3. It follows that the late introduction into opposition proceedings of the ground of inventive step constitutes the introduction of a fresh ground of opposition, even if an objection based on lack of novelty was initially made. Although in accordance with the principal of volenti non fit injuria a fresh ground of opposition may be introduced into appeal proceedings with the agreement of the patentee, in the response to the statement of grounds of appeal the patentee explicitly withholds his consent.

4. In the present case, inventive step could therefore only be raised if it was implicitly present in the originally filed notice of opposition or if the Opposition Division introduced the ground of its own volition. The appellant has drawn attention to various passages in the notice of opposition which it is asserted show that objection of lack of inventive step was always intended. The appellant asserts that the informed reader would understand that when read as a whole the opposition documents contain an inventive step argument.

5. The argumentation in the notice of opposition starts by citing documents D1 and D2 and reciting the features of claim 1. It then asserts that various features of the claim preamble would be understood by the skilled person as implicit whenever reference is made to a lithographic printing plate. It summarises the remaining features of the preamble and the characterising feature as "the direct exposure of a printing plate with screening data, whereby the screening is a frequency modulated screening" (Board's translation). The difference between amplitude and frequency modulated screening is described. D1 and D2 are then individually discussed and the summarised disclosure of the claim is said to be known from each of these documents. The discussion of D1 and D2 ends with the respective phrases "this feature of claim 1 is therefore not new" and "this feature of claim 1 of the patent in suit is therefore also anticipated by this document and not new" (Board's translations).

6. The argument is thus that all practical lithographic printing plates will have most of the features of the claim preamble; D1 and D2 show such printing plates and also disclose the remaining features of the preamble and the characterising feature as summarised above. This is a novelty argument.

7. This conclusion on the substance of the opposition agrees with that from the formal documents. The pre-printed notice of opposition form, EPO form 2300, includes at point VI a section "grounds of opposition" and a series of boxes to be crossed to indicate on which grounds the opposition is supported. Only the box for novelty was crossed.

8. As regards the procedure subsequent to filing, in the correspondence between the parties only novelty was discussed. The minutes of the oral proceedings state that the opponent requested revocation "on the sole ground of lack of novelty" and give the verbal decision as being that claim 1 satisfied the requirements of the EPC with respect to novelty. In the written decision, paragraph 8, the Opposition Division states that "the only ground of opposition mentioned in the notice of opposition is lack of novelty, and only this ground was discussed during the oral proceedings". The appellant has not contested this.

9. It therefore appears that the opponent never raised or discussed the ground of inventive step at any time in the course of the opposition proceedings.

10. The conclusion of the Board is accordingly that opposition was filed and pursued only on the ground of lack of novelty.

11. The Board has considered the further question of whether the Opposition Division of its own motion introduced the ground of lack of inventive step into the proceedings. As set forth in decisions G 9/91 and G 10/91, OJ EPO 1993, 408 and 420, there are circumstances in which an Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC. The Enlarged Board stated however that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC should only take place in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent.

12. The invitation to oral proceedings from the Opposition Division starts with the statement that "During the oral proceedings novelty and inventive step ...will be discussed" (Board's emphasis). In a penultimate paragraph the invitation states that "the opponent has provided no clear arguments against the inventive step of the claimed method" and then gives reasons why the claimed method is deemed to involve an inventive step over the available prior art. However, the Opposition Division's decision, after stating that "the opponent raised no objection against the inventive step of the claimed method", includes at paragraph 12 only a brief discussion of inventive step and gives the opinion that "the claimed method prima facie involves an inventive step" (Board's emphasis).

13. These various references to inventive step are therefore not understood by the Board as the introduction of a new ground in accordance with Article 114(1) EPC. The comments in the invitation to oral proceedings could be interpreted as inviting the opponent to raise the ground, but as is clear from the minutes he did not do so. The brief comments at paragraph 12 of the decision give the Opposition Division's non-binding opinion that the claimed method prima facie involves an inventive step. An objection is not raised. The Board accordingly concludes that the ground of lack of inventive step was not introduced into the proceedings by the Opposition Division.

14. Finally, the Board notes that the subject-matter of claim 1 is novel with respect to the disclosure of each of D1 and D2; neither of these documents clearly and unambiguously discloses a lithographic printing plate having a flexible support.

ORDER

For these reasons it is decided that:

The appeal is dismissed.