Tuesday, May 12, 2020 T 487/16 - Can a document admitted by the opposition division and upon which the decision was based be excluded from appeal proceedings?

In the present case, an appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking his patent due to lack of novelty  w.r.t. D1 and lack of inventive step w.r.t. D3 in combination with late-filed document D7. D7 was admitted by the Opposition Division as prima facie relevant (page 5 of the decision). Arguments of the proprietor before the Opposition Division, that D7 belongs to a remote technical field were not of any avail. In his grounds of appeal, the appellant submitted that "D7 was late filed before the opposition division which then erred in admitting the document despite its content relating to a remote technical field and not being of prima facie relevance to the claimed subject-matter. D7 should thus not have been admitted into the proceedings." Was the Board convinced? Did the Board allow D7 to be used? Did the Board agree with D7 being from an unrelated or remote technical field and did that have any effect on its admissibility or otherwise?

Friday, December 06, 2019 T 184/17 - Inventive step not raised earlier but admitted in appeal

In the present case, a lack of inventive step was invoked by the respondent-opponent for the first time in appeal. The lack of inventive step relies on the same passages of the same prior art document used in the earlier -unsucesfully- lack of novelty objection. The appellant-proprietor submitted that the inventive step objection constituted a fresh ground for opposition, and that its introduction into the appeal proceedings is only possible with the consent of the appellant-proprietor, which it did not give. The Board observed that "the new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Article 100(a) EPC for novelty. This raises the question whether under such special circumstances, the new objection still falls under the principle as expressed in G10/91, or can be admitted into the appeal proceedings without the agreement of the patentee."

Tuesday, September 24, 2019 T 1359/14 (and T 1914/12) - Does the Board have discretion to admit late arguments based on facts already in the proceedings?

A reader pointed me to this decision, in French. In reason 2.1, the Board indicates that a Board has no discretion as to the admissibility of late arguments based on facts already in the proceedings. The Board referred to and followed pararaph 7.2.3 of T 1914/12, also in French, which substantially decided that the lack of "arguments" in Art. 114(2) EPC allowed to file new arguments late, contrary to what Art. 12 RBPA said/says. In view of the tightening of what will be allowed and not with the revised RPBA that enters into force on 01.01.2020, it wil be interested whether a future Board will come to the same conclusion.

In any case, it appears that there should be a referral as this decision follows T 1914/12 which however distinguished from T 1621/09, and seems is a fundamental point of law.

Friday, August 12, 2016 T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

Friday, May 15, 2015 T 1756/11 - Third party excluded from the party?

This is an appeal against a decision of the Opposition Division to maintain European Patent No. 1 219 158 in amended form in accordance with the proprietor's first auxiliary request.

The opponent filed its notice of appeal on 9. August 2011 while paying the appeal fee. The grounds were filed on 23. September 2011.

Observations by third parties were filed on 17. January 2013 and, in accordance with Art. 114 (2) EPC, communicated by the Board towards the parties.

The preliminary opinion of the Board was issued on 30. September 2014. Oral proceedings took place on 14. January 2015.

Neither the Appellant or respondent commented on the Observations by third parties.

The Board in this decision decides to disregard the late-filed third party observations and to refrain from mentioning them in its decision. Cited below is the board's motivation for this.

Headnote

"See Reasons 2"

Briefly paraphrased and translated as:

Reason 2.3: Art. 114(2) gives the Opposition Division the right to disregard late-filed facts or evidence. However, this applies to filings by parties to the proceedings, which according to Art. 115 a third party is not. Nevertheless, Art. 114(2) is considered to still apply to third party observations which were filed after the opposition time limit by way of a legal fiction according to T 951/91, reason 5.9.

The reasoning behind this is to prevent Art. 115 being (ab)used to expand the rights of third parties or even parties to the proceedings.

Reason 2.5: Although a third party thus has no right to have its observations considered by the Opposition Division, it is common practice for the Opposition Division to at least comment on the relevance of such late-filed third party observations in their decision.

Reason 2.6: Due to the third party not being a party to the proceedings, there is thus no need to, in case of late-filed third party observations (i.e., filed after the time limit for filing the notice of opposition), to comment on their inadmissibility in case the Opposition Division considered the observations not relevant and further disregarded them.

Reason 2.7: On the other hand, the Opposition Division may nevertheless consider and examine such late-filed observations out of its own motion under Art. 114(1) if it considers them prima facie relevant.

Reason 2.8: However, in appeal proceedings, the own-motion principle applies to a lesser degree ("verliert (...) das Gewicht"), especially in inter-partes proceedings, G 9/91, G10/91, reason 18. Here, the impartiality of the Board of Appeal is of up-most importance.

Reason 2.9: The Board of Appeal thus generally needs to disregard late-filed third party observations, except when they relate to amendments during the opposition or appeal-proceedings, G 9/91, G10/91, reason 19, in which case the Board may or may not admit them into the proceedings.

Reason 2.10: A party to the proceedings may however at all times submit comments on new facts or evidence from such third party observations, when these in their view can affect the decision. This right comes forth from Art. 113(1), i.e., the right to be heard. In this case, the Board has to decide on the (in)admissibility of such late-filed comments from the party to the proceedings.

Reason 2.11: In the present case, despite there being claim amendments during the opposition proceedings, the Board is of the opinion that the (anonymous) late-filed third party observations are to be disregarded and not mentioned in the decision. No party commented on the observations either in accordance with reason 2.10.