3.4.2 Meaning of "fresh grounds for opposition"

In G 1/95 and G 7/95 ("Fresh grounds for opposition", OJ 1996, 615 and 626; consolidated proceedings), the Enlarged Board first defined the meaning of "grounds for opposition" within the framework of Art. 100 EPC, and paragraph (a) in particular, as well as in the light of G 10/91 (OJ 1993, 408 and 420, which had first used the term "a fresh ground for opposition" in the context of considering the proper application of Art. 114(1) EPC during opposition appeal proceedings – see also summary of G 10/91 in this chapter IV.C.3.3.).

It noted that the function of Art. 100 EPC is to provide a limited number of legal bases i.e. a limited number of objections, on which an opposition can be based, all "grounds for opposition" in Art. 100 EPC having their counterparts in other articles of the EPC which have to be met during the procedure up to grant. Whereas the grounds in Art. 100(b) EPC and 100(c) EPC each relate to a separate and clearly delimited legal basis for an opposition, the totality of the articles (Art. 52 to 57 EPC) within the meaning of Art. 100(a) EPC constitute a collection of different objections to the maintenance of the patent. The Enlarged Board further noted that the wording of R. 55(c) EPC 1973 (R. 76(2)(c) EPC) clearly showed the distinction made between the grounds, meaning as in Art. 100(a) EPC the legal reasons or legal bases, and their substantiation. Accordingly, in the context of Art. 99 and 100 EPC 1973 and R. 55(c) EPC 1973 (R. 76(2)(c) EPC), a "ground for opposition" had to be interpreted as meaning an individual legal basis for objection to the maintenance of a patent. It followed in particular that Art. 100(a) EPC 1973 contained a collection of different legal objections (i.e. legal bases), or different grounds for opposition, and was not directed to a single ground for opposition.

In G 1/95 (OJ 1996, 615), the Enlarged Board went on to hold that, in a case where a patent had been opposed on the grounds set out in Art. 100(a) EPC, but the opposition had only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based on Art. 52(1) and (2) EPC was a fresh ground for opposition.

In G 7/95 (OJ 1996, 626), it was held that in a case where a patent had been opposed under Art. 100(a) EPC on the ground that the claims lacked an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty vis-à-vis the said documents based on Art. 52(1) and Art. 54 EPC was a fresh ground for opposition. However, the allegation that the claims lacked novelty in view of the closest prior art document could be considered in the context of deciding on the ground of lack of inventive step.

According to the board in T 514/04, the lack of novelty objection originally raised against claim 5, relating to a process for the preparation of a product, did not extend to the products obtained from this process, including the products of claims 1 to 4, and consequently the lack of novelty objection raised against claims 1 to 4 for the first time before the board was a fresh ground for opposition. See also T 1244/13.

In T 1959/09 the patentee (respondent) had requested the board to refer to the Enlarged Board of Appeal the question whether an existing ground for opposition raised in respect of a different independent claim amounts to a fresh ground of opposition as set out in G 10/91. In this respect, reference was made to T 514/04 (see above), where the board had stated that the extent and ground for opposition mentioned in R. 55(c) EPC 1973 (R. 76(2)(c) EPC) were connected in the sense that a specific claim(s) is/are objected to under a specific ground or grounds. The board did not recognise the necessity for such a referral since the ground for opposition pursuant to Art. 100(c) EPC as well as the question whether the requirements of Art. 123(2) EPC were met were clearly considered in the impugned decision. In addition, the board distinguished the present case, where claims 1 and 17 of the main request both belonged to the same category and virtually included the same subject-matter, from the case in T 514/04, where the question posed was whether a ground for opposition raised against a claim to a process applied equally to a claim to a product produced by said process. Hence, T 514/04 had no bearing on the case at issue.

The board noted in passing that there was no basis in G 10/91 for the general assumption that a ground for opposition raised against an independent claim may not subsequently be raised by the opponent against another independent claim, falling within the scope of the opposition. According to the board, T 514/04 neither mentioned nor elucidated the relevant passages in G 10/91 which supported that assumption. Actually, G 10/91 appeared to regard a new ground for opposition as being a "ground for opposition not covered by the statement" pursuant to R. 55(c) EPC 1973, no indication being given in that decision which would justify the inference that this should be construed far more broadly as meaning any ground for opposition in respect of a specific given claim which was not covered by the statement pursuant to R. 55(c) EPC 1973 (R. 76(2)(c) EPC).

See also in this chapter IV.C.3.4.4 "Objections of lack of novelty and lack of inventive step".

For decisions dealing with the meaning of "fresh ground of opposition" in the context of appeal proceedings, see T 520/01 and T 620/08. See also chapter V.A.3.2.3 h) "Fresh ground for opposition on appeal".