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."

Friday, December 28, 2018 T 1058/15 - Probably relevant...decidedly late

What happens when in opposition appeal the opponent-appellant – who in appeal had initially merely raised grounds in view of lack of inventive step – shortly before oral proceedings files a new document D8 allegedly destroying novelty of the claims?

Regarding this fresh ground of appeal (i.e., novelty), it is established case law that, exceptionally, in appeal proceedings a fresh ground may be admitted if the patentee agrees that such a ground be considered and if it is deemed by the Board to be prima facie highly relevant (G 9/91, Reason 18).

In view of late-filed document D8, in principle the Boards of Appeal have the discretion, under Article 114 (2) EPC, not to allow such late-filed evidence. This applies in particular to evidence filed after the statement of grounds of appeal or the reply (Article 13 (1) RPBA) or after the oral hearing has been served (Article 13 (3) RPBA). The criteria to be used in the exercise of this discretion vary according to the state of the proceedings in which the evidence is submitted.

In the present case, the appellant filed document D8 only after the hearing had been scheduled and only a few weeks before the hearing. At such a late stage of the appeal process, general legal principles such as procedural economy, legal certainty and equal treatment of the parties are becoming increasingly important.

The Board found that the possible relevance of an easily retrievable document such as D8 should already have become apparent from its title, figures and IPC class. The opponent-appellant had failed to substantiate any reasons which would excuse overlooking D8 and its omitted submission in the first-instance proceedings.

The novelty objection based on D8 in the present appeal proceedings could not be considered a completely new ground for opposition as in the present case novelty had already been objected to in opposition proceedings on the basis of another document (D1). Regardless, the Board found that in the spirit of G 9/91, the patentee should not have to expect that a further ground for opposition will come into play during the appeal proceedings and complicate the procedure.

Accordingly, given that the patentee did not consent to the admission of new document D8, and in view of the inaccurate and very late presentation of this document and the very late revisitation of novelty which was not the subject of the appeal proceedings until then, the Board - notwithstanding relevance of the new document - decided to exercise its discretion under Article 13 (1) RPBA in order not to allow document D8 in the proceedings. The claims were found to be inventive and the appeal was rejected.

Tuesday, January 19, 2016 T 399/13 - No why, so inadmissible

When filing the appeal against the decision from the Opposition Division, the appellant filed three new sets of amended claims and arguments as to their allowability, but did not give a reasoning why the appealed decision was wrong. Without this necessary link between the contested decision and the statement of grounds, the appeal was held inadmissible by the Board.

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.

Tuesday, May 05, 2015 T 2541/11 - "Right to be heard not absolute, but must be balanced"

The appellant-opponent lodged an appeal against the interlocutory decision of the opposition division  on the amended form in which European patent no. 1394387 could be maintained. The appellant-proprietor also lodged an appeal against the above interlocutory decision. The appellant-opponent filed a new document, E12, with their grounds of appeal. The Board did not admit this new document.

Background / Summary of Facts and Submissions

I. The appellant-opponent lodged an appeal, received 12 December 2011, against the interlocutory decision of the opposition division posted on 13 October 2011 on the amended form in which European patent no. 1394387 could be maintained and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 23 February 2012.

The appellant-proprietor also lodged an appeal, received 14 December 2011 against the above interlocutory decision and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 20 February 2012.

II. The opposition was filed against the patent as a whole and based inter alia on Article 100(a) together with Articles 52(1) and 54(3) EPC for lack of novelty and Article 56 EPC for lack of inventive step.

The division held, inter alia, that the grounds for opposition (novelty and inventive step) mentioned in Article 100(a) EPC did not prejudice maintenance of the patent as amended according to an auxiliary request, having regard to the following documents, amongst others: E1, E4, E6, E9.

III. The appellant-opponent filed the following document with their grounds of appeal: E12.

IV. Oral proceedings before the Board were duly held on 17 December 2014. During the oral proceedings, the appellant-opponent filed an objection under Rule 106 EPC in writing. It reads as follows:

Objection acc. to Rule 106 EPC; in the name of the opponent.

The decision to not admit reference E12 into the proceedings constitutes a violation against the right to be heard for the following reasons:

Friday, March 27, 2015 G 3/14: is the clarity issue newly introduced or not?

G 3/14 relates to the examination of clarity in opposition proceedings. 
Yesterday, the Enlarged Board of Appeal decision G 3/14 has been published by the EPO. A 97 pages long document with extensive discussions of the all submissions and of case law of the Boards of Appeal. This blog mainly relates to the reasons of the Enlarged Board with respect to the question of law. The referring Board of Appeal asked questions about the interpretation of decision G 9/91, however, the Enlarged Board of Appeal changed the question of law towards: What is the correct interpretation of Art. 101(3) EPC?
After studying the reasons, it seems that "introduces" is the most important term in the catchwords. A combination of granted claims does not comprise newly introduced clarity issues, because these issues were already present in the granted claims. 
One of the main lines of reasoning is: A claim tree with dependent claims represents (quite often) a large number of independent claims which are the result of writing out all claimed combinations. When the patent is granted, all the possible combinations of claims are, at least in theory, fully examined (for example also for clarity, Art. 84 EPC). When, in opposition proceedings a dependent claim is combined with an independent claim, a number of the granted combinations of claims is deleted and one of the already examined and granted combination is chosen to be the independent claim. 
According to the Enlarged Board, it is an explicit choice in the EPC that clarity is not a ground for opposition and it is an explicit choice of the legislator that clarity must be addressed in Examination proceedings - "opposition is not a continuation of the Examination proceedings". Therefore, only newly introduced clarity issues can be a ground of revocation of the patent under Art. 101(3) EPC.

Catchwords

In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

Friday, June 20, 2014 T 2354/12 - A detour to decide on admissibility

A portion of the appeal decision relates to admissibility of late filed documents. Late filed document E6 is admissible because it seems prima facie relevant - this is often the route the Boards follow to decide on the admissibility of a late filed document. However, the admissibility of late file document E7 has not been discussed on basis of the content of the document, but mainly on basis of the what type of document E7 is. Document E7 is an Art. 54(3) EPC document (and has been submitted by the appellant in reply to the summons of oral proceedings). The Board decided on the admissibility of E7 by answering the subsequent question:  "If the document is admitted, does it raise a new ground of opposition?".  This appeal is filed by the opponent against a decision of the Opposition Division.


Citations from the decision:


[...]

Reasons for the Decision

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Admissibility of documents E6 and E7

2. The teaching disclosed in document E6 seeks to make the configuration of a home network computer user friendly "by eliminating the need for any type of user interaction during the configuration process" and deals in particular with the automatic configuration of a computer.
Furthermore, as E6 appears, prima facie, to disclose a feature (ie. the automatic generation of a configuration request on the initial power-up) which according to the contested decision was not known from the documents then on file, its submission with the statement of grounds of appeal can be regarded as a justifiable reaction of the appellant to the findings of the opposition division.

2.1 Hence, despite the fact that E6 was filed only with the statement of grounds of appeal and thus had no part in the first instance proceedings, the Board, considering its relevance, has decided in favour of its admission into the appeal proceedings (Article 12(4) RPBA).

3. Document E7 is a European patent application which was filed before the filing data of the present application, but published after that date. As prior art within the meaning of Article 54(3) EPC, E7 can only be used to support a lack of novelty objection.

3.1 When filing the opposition, the opponent had indicated that the subject-matter of the patent in suit was not patentable under Article 100(a) EPC because of lack of novelty (Article 54 EPC) and lack of inventive step (Article 56 EPC). However, the lack of novelty objection was neither substantiated nor even referred to in the statement of grounds of opposition. This shows that the opponent had actually no reason to invoke Article 54 EPC as a ground for opposition. Lack of novelty was therefore never an issue before the opposition division and has to be regarded as a fresh ground for opposition raised only in the appeal proceedings.

3.2 As held by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ EPO 1993, 408, 420), if the patentee does not agree to the introduction of a fresh ground for opposition, such ground may not be dealt with in substance in the decision of the Board of Appeal at all. This conclusion was confirmed by the Enlarged Board of Appeal in its decision G 7/95 (OJ EPO 1996, 626) in which it was furthermore held that when a patent had been opposed under Article 100(a) EPC on the ground that the claims lacked an inventive step, the ground of lack of novelty was a fresh ground for opposition and accordingly could not be introduced into the appeal proceedings without the consent of the patent proprietor.
In the present case, the respondent did not consent to an examination of the novelty of the claimed subject-matter, since this issue had never been substantiated in the opposition proceedings and was in fact a fresh ground for opposition.

3.3 As document E7 would only be relevant for the assessment of the novelty of the claimed subject-matter and a fresh ground for opposition may not be dealt with by the Board without the consent of the proprietor, there is no reason to admit this late-filed document into the appeal proceedings.


[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T235412.20140429. The whole decision can be found here. The file wrapper can be found here.
Photo by Brian Rawson-Ketchum obtained from Flickr.