My template for Paper C
As you probably know, Paper C is about writing an opposition. You need to attack all of the claims, as I explained in the summary about Paper C. The notice of opposition you write must be admissible. There is no Form provided in the Paper anymore, so you have to provide the necessary details (e.g. signature) in your answer.
I am now sharing a possible template for the Paper with some useful sentences you can use. However, please adjust these to the Paper you are doing and do not use my template blindly.
Number of opposed patent:
Patent proprietor:
Opponent:
Grounds for opposition: Art.100(a) novelty, inventive step, Art.100(c) added subject matter
Extent of opposition: all claims
The opposition fee has been paid online.
Name of representative: (Add the name from the client’s letter, do not use yours.:))
Signature: (Again, not your signature.)
Effective dates - Art.89 EPC
Claims W, X: Date of priority
Priority of these claims were validly filed, since it was filed within 12 months, by the same applicant, for the same invention and priority is claimed from the first application. It is the same invention, since the priority document included these claims. (Art.87(1) EPC)
Claim Y, Z: Date of filing, since the subject matter of these claims were not included in the priority document, so the claimed priority is not valid for these claims.
Documents (English version)
A1: Patent opposed
A2, A3, A5 and A6: Art.54(2) prior art documents for claims …, since these documents were published before the effective date of these claims.
A4: Art.54(3) prior art document for claims …, since A4 is a European patent appl. with earlier effective date and later publication date than the effective date of these claims.
Grounds
I. Added subject matter - Art.100(c)
1. Claim W
The subject matter of claim W extends beyond the content of the application as filed (Art.123(2) EPC), because claim W was added after filing, without having a basis for the amendment in the application. There is no direct and unambiguous teaching in the application as filed for a device/method which is …
Claim W thus extends beyond the content of the application as filed under Article 100(c) EPC.
(In case of an added subject matter according to Art.76(1), your text will have to be slightly different, such as the content of the application extends beyond the content of the earlier application as filed.)
II. Novelty - Art.100(a)
1. Claim X is not novel over Ax under Art.54(2)/Art.54(3) EPC
Reasons for lack of novelty:
Ax discloses … (You need to always cite the relevant paragraphs from Ax and explain why it is the same, where not evident, for example argue why the range is not novel.)
Thus Ax discloses all the features of claim X, so the subject matter of this claim is not novel.
III. Inventive step - Art.100(a)
1. Claim Y - independent claim - is not inventive over Ax+Ay under Art.56.
Claim Y relates to …
Ax is the closest prior art (CPA) because it relates to the same purpose of … and is from the same technical field of … (Also cite relevant paragraph from the CPA.)
Ax discloses …
Claim Y differs from Ax in that …
The effect of this feature is … (Always cite the relevant paragraph from A1.)
This solves the technical problem of …
Reasons for reading D2:
Ay (D2) from the same/neighbouring technical field of … provides a solution to this problem. (Cite the relevant paragraph from CPA.)
Ay discloses … (describe how Ay solves the technical problem)
Describe why (what is the incentive) and how skilled person would combine the Ax (CPA) and Ay (D2).
The skilled person would thus only require an obvious modification of … and would arrive at the additional features of claim Y without exercising any inventive skill.
Accordingly, the subject matter of claim Y does not involve an inventive step in view of Ax+Ay.
2. Claim Z - dependent on claim 1 - is not inventive over Ax+Ay under Art.56.
Claim Z relates to …
Ay is the closest prior art because it relates to the same purpose of … and is from the same technical field of … (Also cite relevant paragraph from the CPA.)
Ay discloses …
Claim Z differs from Ay in that … and in that …
The effect of the first difference is … (Always cite the relevant paragraph from A1.)
The effect of the second difference is … (Always cite the relevant paragraph from A1.)
The first and second differences do not mutually influence each other and have no synergistic effect. They solve two separate partial problems and can therefore be treated separately, Guidelines, G, VII, 5.2.
The first difference solves the first partial objective technical problem of …
The second difference solves the second partial objective technical problem of …
First partial problem:
Ax (D2) from the same/neighbouring technical field of … provides a solution to this problem. (Cite the relevant paragraph from CPA.)
Ax discloses … (describe how Ax solves the technical problem)
Describe why (what is the incentive) and how skilled person would combine the Ay (CPA) and Ax (D2).
Second partial problem:
Az (D2) from the same/neighbouring technical field of … provides a solution to this problem. (Cite the relevant paragraph from CPA.)
Az discloses … (describe how Az solves the technical problem)
Describe why (what is the incentive) and how skilled person would combine the Ay (CPA) and Az (D2).
Therefore, the skilled person, when faced with the technical problem, would arrive at claim Z without exercising any inventive skill. Accordingly, the subject matter of claim Z does not involve an inventive step in view of Ay+Ax+Az.