Tuesday, March 19, 2019 T 47/18 - Admission of new objections which were not raised in the statement of grounds of appeal

The current Rules of Procedure of the Boards of Appeal, and in particular Art. 12 and 13 thereof, have been applied more and more strictly over the last few years. We cited some of those decisions every once in a while, and this is another of those decisions. With the new Rules of Procedure, expected to enter into force early 2020 (see here; and for the user consultation documents here and here), it will get even more strict. In the opposition case below, the opponent's statement of grounds of appeal contained neither an objection of lack of clarity of the (amended) claims under Art. 84 EPC nor an objection under Article 123(2) EPC. Rather, it contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections.  According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case.  Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA. The Board discussed in detail why, in this case, the objections were not admitted into the proceedings. Together with the current state of the proceedings and the need for procedural economy, an important factor was that the appellant could have raised the objections in question at several instances in the first instance proceedings before the opposition division.

Summary of Facts and Submissions

I. The appeal was filed by the appellant (opponent) against the interlocutory decision of the opposition division finding that, on the basis of auxiliary request 2 underlying the impugned decision, the patent in suit met the requirements of the EPC.

II. According to the decision under appeal, auxiliary request 2 met the requirements of Articles 84 EPC and 123(2) EPC and "this had not been challenged by the Opponent" (see point 4.2.2 of the Reasons of the decision). Furthermore, according to the minutes (points 8 and 9) of the oral proceedings before the opposition division, when discussing the amendments to auxiliary request 2, the proprietor referred to specific passages of the application as filed and "[t]he opponent had no objections regarding admissibility, allowability or novelty".

In the impugned decision, the opposition division also held that the subject-matter of the independent claims of auxiliary request 2 involved an inventive step starting from

[...]

III. The respondent (proprietor) replied to the grounds of appeal on 9 July 2018. It filed, inter alia, auxiliary requests 1 to 6.

IV. On 20 September 2018, the parties were summoned to oral proceedings to be held on 6 February 2019.

V. In a letter dated 4 December 2018, the appellant raised objections for lack of clarity under Article 84 EPC and objections under Article 123(2) EPC against the claims of the respondent's main request (corresponding to auxiliary request 2 before the opposition division).

VI. By letter dated 11 January 2019, the respondent filed auxiliary requests 7 to 15.

VII. Oral proceedings before the board took place on 6 February 2019, at the end of which the decision was announced.

VIII. The wording of the independent claims of the respondent's main request (auxiliary request 2 before the opposition division) is as follows:

[...]

IX. The arguments of the appellant, as far as relevant for the present decision, may be summarised as follows:

The objections raised in the letter dated 4 December 2018 should be admitted into the proceedings. They were raised for the first time after the expiry of the time limit for filing the grounds of appeal and after the issuance of the summons to oral proceedings. Had the board not have issued the summons so early, these objections would have been raised before the issuance of the summons.

D1 or D7 were the closest prior art. The subject-matter of claims 1 and 11 differed from this prior art only by the sample removal apparatus being coupled to a robotic transfer mechanism wherein the robotic transfer mechanism moved the separation device from the separation and concentration station to the identification and/or characterisation module. The problem to be solved was to increase the processing speed. The solution was obvious in view of D4, D5 or D6. If the board considered that a further distinguishing feature resided in the interrogation/analysis being carried out on the concentrated microbial agent, this was also obvious in view of D5 and D12. Thus, the respondent's main request did not comply with the requirement of Article 56 EPC.

X. The arguments of the respondent, as far as relevant for the present decision, may be summarised as follows:

The appellant's objections under Articles 84 and 123(2) EPC were raised late and should not be admitted into the proceedings. The requirement of inventive step was met. In particular, it would not have been obvious to arrive at the subject-matter of independent claims 1 and 11 when starting from either D1 or D7.

XI. Requests

The appellant requested that the contested decision be set aside and that the patent be revoked.

The respondent requested that the appeal be dismissed. In the alternative it requested that the patent be maintained in amended form based on one of auxiliary requests 1 to 6 filed with the reply to the grounds of appeal or one of auxiliary requests 7 to 15 filed with the letter dated 11 January 2019.

Reasons for the Decision

1. Admissibility of appellant's objections under Articles 84 and 123(2) EPC

1.1 The statement of grounds of appeal contains neither an objection of lack of clarity of the claims nor an objection under Article 123(2) EPC. Rather, it contains only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections (see V and IX above).

1.2 According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case. Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA (see for instance T 996/15, Reasons 3.1, for a new objection under Article 84 EPC; T 682/11, Reasons 3.2, for a new objection under Article 123(3) EPC; T 1307/13, Reasons 3, for a new objection regarding the validity of the priority claim).

1.3 Furthermore, the objections in question also do not constitute merely a new argument (cf. T 1914/12, Reasons 7 to 7.2) because they go beyond submissions serving to underpin the facts, evidence and grounds filed in good time (see Keussen in Benkard, EPÜ, 3rd ed. 2019, Art. 110, paragraph 52). Rather, they are based on new legal grounds (cf. G 4/92, Reasons 10: "des moyens nouveaux") that were not addressed before in the appeal proceedings.

1.4 The boards of appeal must exercise this discretion in view of, inter alia, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

1.5 The present main request was filed as auxiliary request 2 in the proceedings before the opposition division by letter dated 31 July 2015. In its letter dated 4 March 2016, the then opponent objected to this request only for lack of inventive step (see page 9, item IV ). In its communication dated 15 September 2016 accompanying the summons, the opposition division stated that the amendments in auxiliary request 2 appeared to comply with, inter alia, Articles 84 and 123(2) EPC and that "this has not been challenged by the Opponent" (see item 19 of the communication). According to the minutes of the oral proceedings before the opposition division, the opponent had only objections under Article 56 EPC against this request (see item 8 and following of the minutes). Also, the impugned decision contains the same observation as in the communication accompanying the summons (see II above).

Thus, the appellant could have raised the objections in question at several instances in the proceedings before the opposition division.

There is, therefore, no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about 2 months before the oral proceedings before the board. In this context the appellant submitted at the oral proceedings that it was surprised that the summons had been issued only a little more than two months after the respondent had filed its reply to the grounds of appeal and that, had the oral proceedings taken place later, the objections would not have been filed only two months before them.

However, this argument is flawed because these objections were, in any event, raised after the appellant had filed its statement of grounds, and this is what is decisive for the discretion under Article 13(1) RPBA.

Taking these aspects into account, considering the state of the file and in particular procedural economy, the board did not admit the appellant's objections under Article 84 and 123(2) EPC into the proceedings.

2. Main request - inventive step

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2.6.5 It follows that it would not have been obvious to arrive at the subject-matter of claims 1 and 11 of the main request in view of the cited prior art. Thus, the requirement of Article 56 EPC is met for the independent claims. The same holds true for the dependent claims.

Order

For these reasons it is decided that:


The appeal is dismissed.

This decision T 47/18 (pdf) has European Case Law Identifier: ECLI:EP:BA:2019:T004718.20190206. The file wrapper can be found here. Photo "foggy fence" by "liz west" obtained via Flickr under CC BY 2.0 license (no changes made).