Wednesday, 28 September 2016

T 2091/12 - Changing a fresh ground to an old ground

Some fresh ground coffee
With its appeal, the opponent filed a new novelty attack based on prior use. He also filed evidence supporting the prior use allegation. 
Novelty was not a ground of opposition in first instance. In the summons, the board notes that it is thus a fresh ground of opposition. As the proprietor did not agree to having it introduced in the proceedings, the fate of this new attack seems ensured. 
However, in his written submissions the opponent files an inventive step attack based on prior use, and supported by the evidence he filed with his statement of grounds. Alas, by this time the board considers it too late in the appeal proceedings, and does not admit the new attack. 

Reasons for the Decision
1. Fresh ground for opposition (lack of novelty)
1.1 According to the headnote of G 7/95, OJ EPO 1996, 649, "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".
1.2 In its statement of grounds of appeal the appellant raised for the first time in the present opposition-appeal proceedings a lack of novelty objection based on alleged prior uses and filed evidence therefor.
1.3 The respondent explicitly requested that the above-mentioned fresh ground for opposition not be introduced into the appeal proceedings.
1.4 Given that according to G 7/95, supra, the board has no power to examine the above-mentioned fresh ground for opposition without the patent proprietor's agreement, the board does not admit the appellant's lack of novelty objection into the appeal proceedings.
2. Admissibility of the appellant's lack of inventive step objection raised after oral proceedings had been arranged and based inter alia on alleged prior uses
2.1 According to Article 13(3) RPBA amendments sought to be made after oral proceedings have been arranged are not to be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.
2.2 In the present case the appellant submitted with its letter dated 1 June 2016 (see point 3), i.e. after oral proceedings had been arranged, for the first time in the present opposition-appeal proceedings an objection as to lack of inventive step based inter alia on alleged prior uses.
2.3 As lack of inventive step had only been challenged up to that point of the appeal proceedings on the basis of the provided patent literature, the above-mentioned new objection based inter alia on alleged prior uses amounts to a complete change of the appellant's case.
2.4 This new inventive step attack raises complex issues requiring inter alia a discussion on whether the alleged prior uses based on documents E9-E11 and E19 can be regarded as substantiated and/or proven on the basis of the evidence submitted.
2.5 Due to the very late stage of the appeal proceedings at which this objection had been raised, it cannot be reasonably expected that the patent proprietor or the board can deal with the above-mentioned complex issues without adjournment of the oral proceedings.
2.6 For the above reasons the board does not admit the appellant's lack of inventive step objection based inter alia on alleged prior uses into the appeal proceedings in accordance with Article 13(3) RPBA.
This decision T 2091/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T209112.20160701 The file wrapper can be found here. Photo by mammela obtained via Pixabay under a CC0 license.


  1. It is clear that a representative cannot be held responsible if his client is not pro-active and fails to give him the good prior art. But objectively, this endeavour never had a great chance of success.

    When looking at the file, the public prior use is two-fold. A first alleged public prior use relates to can ends send to the opponent by a manufacturer. The second alleged prior use was by the opponent himself.
    The opponent can feel himself happy that the Board did not qualify the filing of a public prior use by the opponent himself as an abuse of procedure. With the RPBA the need for such drastic formulations has vanished.

    It is clear that the opponent having seen its opposition being rejected on the basis of the prior art on file, which was eventually confirmed by the Board, he had to do something about it, and hence came up with the public prior use.

    The situation is similar to T 37/00 in which the opponent even said that he did not want to overload the procedure of first instance by a public prior use and waited the appeal to introduce it(!!). In T 37/00 the public prior use was dismissed as such, here only the grounds based on it.

    In full knowledge of G 7/95 and the RPBA, the whole story took a non-surprising turn.

    It will be interesting to see if the battle continues at national level.

    1. The board indeed mentions in their preliminary opinion that, even if it were not a fresh ground, admissibility could be the next problem. They are not convinced of the prior use either, so chances are that it wouldn't have mattered either way.

  2. At least the Board felt obliged to say something substantial about the alleged prior use, despite their statement that they could not examine novelty. Fact is, the evidence was not convincing. It remains to be guessed what the outcome would have been, if the evidence had indeed been convincing.