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.

Tuesday, January 30, 2018 T 2101/14 – Not admissible if not promptly substantiated

The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.

Wednesday, November 01, 2017 T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specific paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Wednesday, September 06, 2017 T 158/14 - Hidden in plain sight

If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 

The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.

The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 

The board doesn't go along with either objection. 

Monday, July 31, 2017 T 287/14 - Disclaimers: do not try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Tuesday, April 05, 2016 T 2385/11 - Admitted even though filed very late

During oral proceedings in appeal against a refusal by the Examining Division, the applicant filed a new and sole request. In this decision, the Board indicates quite clearly under which conditions such a very late request can be -and is this case was- admissible.

Monday, February 22, 2016 T 1533/13 - Expectation or speculation? An explanation needed to make the difference!

After the opposition division revoked the patent in its entirety, the patent proprietor (the appellant) filed an appeal and submitted with the statement setting out the grounds of appeal a main and ten auxiliary requests, and gave reasons why the impugned decision should be set aside. The respondent requested that the appeal be rejected as inadmissible, because of an alleged lack of substantive reasoning as to why the impugned decision was wrong, or that it be dismissed. The Board had to decide on the admissibility of late-filed claim requests based on claim requests already filed without explanation with the statement of grounds of appeal.

Friday, August 28, 2015 T 1273/11 - Provoking appeal

Of interest in this opposition appeal is the request of the respondent that his costs are to be apportioned to the appellant as, according to the respondent, the costs related to the present appeal have been deliberately provoked by the appellant because he withheld relevant material from the first instance proceedings, and therefore prevented the opposition division from taking a complete decision encompassing also this material.

Of further interest is the Board deciding on admissibility of late filed requests, which according to the respondent should be admitted since they are a reaction to the communication of the Board and have been submitted timely before the oral proceedings, such that the appellant had enough time to do a search and prepare for discussing them.

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal against the decision rejecting the opposition against European patent EP-B-1 474 347, and requested that the decision under appeal be set aside and that the patent be revoked.

He also submitted further written evidence and offered two new witnesses.

II. The respondent (patent proprietor) requested that the appeal be dismissed, alternatively, that the decision under appeal be set aside and the patent be maintained on the basis of any of the auxiliary requests 1 to 4, filed with the statement setting out the grounds of appeal, or on the basis of any of the auxiliary requests 5 or 6, filed with the letter dated 23 June 2015.

Additionally the respondent requested not to admit the new evidence submitted with the statement of grounds of appeal, and that his costs be apportioned to the appellant.

Tuesday, February 24, 2015 T 1214/09 - Discretion to allow amendments

The Examining Division refused a European patent application after concluding lack of inventive step in view of document D2 of the subject-matter of claim 1 of a main request . A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC. The Board reviews these decisions and concludes that, in so far as the Examining Division did apply the correct criteria in exercising its discretion under Rule 137(3) EPC, it did so in an unreasonable way and thereby exceeded the proper limits of its discretion.

Summary of Facts and Submissions

I. The applicant (appellant) lodged an appeal against the decision of the Examining Division refusing European patent application No. [...].

II. The contested decision cited the following documents: D2: [...] and D4: [...]

The Examining Division came to the conclusion that the subject-matter of claim 1 of a main request lacked an inventive step in view of document D2. A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC.

Tuesday, August 12, 2014 T 0958/11 - 'leaving respondent in the dark'

This appeal decision relates to admissibility of certain arguments regarding a reworked prior art experiment in the context of novelty and relates to sufficiency of disclosure. This is an appeal that lies from the decision of the Opposition Division. In this appeal case one of the opponents is the appellant, the patent proprietor the respondent.
 
The novelty of the product as granted was contested on the basis of two experiments in which a prior art process was reproduced. There was no discussion about the first experiment. Already in response to the ground of appeal the respondent expressed severe doubts regarding the proper reworking of the second prior art example, in particular as regards the concentration of the starting materials before mixing. Not earlier than at the oral proceedings, the appellant contested these findings. The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment. In this decision the board clearly expressed its annoyance about the behavior of the appellant. The board finds a solution in Art. 13 RPBA to end the discussion about the second experiment.

In this blog posting, the sufficiency of disclosure discussion is ignored but it is interesting for readers who look for case law in which claims are refused because of a lack of sufficiency of disclosure.



Citations from the decision:

[...] 

Reasons for the Decision

1. Main request - Novelty

1.1 The novelty of the product according to claim 1 as granted was contested on the basis of two experiments in which the process disclosed in example 2 of D1 was reproduced.

1.2 Regarding the first experiment, the board agrees with the findings of the opposition division that this reworking is manifestly not acceptable, as it does not correspond to the strict reproduction of said example, the mixing having been carried out in an agitated reactor while in D1 it occurred in a reactor having a Y form.

1.3 Concerning the second experiment, the respondent expressed severe doubts regarding the proper reworking of example 2 of D1, in particular as regards the concentration of the starting materials before mixing.
The appellant contested these findings and stated that the concentrations of the starting materials cerium nitrate and zirconyl nitrate were conventionally expressed in g/l of CeO2 and ZrO2. The concentrated starting materials were then diluted with water so as to exactly obtain the same concentrations before mixing as in example 2 of D1.
The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment.
The board observes that the information provided at the oral proceedings by the appellant is of such an importance that it would have required an adjournment of the oral proceedings, because - as argued by the respondent - the concentration is one of the key features of the invention (see in particular claim 15 as granted which requires a low concentration of the starting materials).
Since the respondent's doubts had already been raised with its response to the grounds of appeal, i.e. almost three years ago, the board objects to the appellant's silence during the written procedure on this important feature. The oral explanations of the appellant revealed that it was perfectly aware of the obscure presentation of the relevant part of its test. Instead of redressing this defect, the appellant chose to leave the respondent in dark until the oral proceedings.
The appellant's behaviour not to comment during the written procedure on this relevant issue could - if done with the intention to surprise the respondent during oral proceedings - amounts to an abuse of procedure.
At least its explanations during the oral proceedings as to the concentrations of the starting materials and as to the calculation method used constitute an amendment to a party's case, the admittance of which lies within the board's discretion (Article 13(1) RPBA).
Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues that the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA). This is the case here. Having uncovered the concentration of the starting materials and the calculation method, the appellant questioned the relevance of the respondent's doubts as to the proper reworking of example 2 of D1. To show that these doubts prevail it would have now been up to the respondent to perform comparative tests. Whereas these could have been easily performed during the last almost three years, had only the appellant reacted directly to the respondent's response to the grounds of appeal, it is obvious that this is not possible on the day of the oral proceedings.
The Board therefore exercises its discretion not to admit the latest amendment of the appellant's case into the proceedings.
In the absence of a clear and unambiguous reproduction of example 2 of D1, and thus, of a direct and unambiguous disclosure of the claimed subject-matter, the board therefore decides to reject the evidence submitted for lack of novelty.

1.4 The objection of lack of novelty was solely based on the reworked example 2 of D1. None of the documents cited during the opposition proceedings disclose the subject-matter of the four independent claims of the main request at issue. Therefore, the board is satisfied that these claims, and those which depend thereon, meet the requirements of Article 54(1) and (2) EPC.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T095811.20140702. The whole decision can be found here. The file wrapper can be found here.
Photo by Vinoth Chandar obtained from Flickr.