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Date of decision
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19 July 1996
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Case number
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G 0007/95
- EBA
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Application number
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EP85305391
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Applicant name
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ETHICON INC.
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Opponent name
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United States Surgical Corporation
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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.
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Keywords
No power to examine fresh grounds for opposition without
agreement of patentee
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Summary of Facts and Submissions 
...
Reasons for the decision
...
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.
Remarks: The Summary of Facts and Submissons and Reasons for the
decision are identical in their wording to the corresponding
sections of decision G 0001/95, OJ EPO 1996, 615. The
proceedings were consolidated. The Reasons for the decision in
G 0007/95 contain in addition a paragraph 7.3.
O.J. EPO issue: 1996,626
Case law reports: CLBA 1996 ; OJ/EPO-SE 1996 ; OJ/EPO-SE 1997
