Thursday, September 20, 2018 T 1914/12 - Does the Board have discretion as to the admissibility of late arguments based on facts already in the proceedings?

A decision in French, but well worth reading (and well-readable, too). It concerns the question whether the Boards of Appeal, based on Articles 12(2) and 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA), have the discretion not to admit arguments submitted late in the proceedings - when the facts (in this case, a prior art document) underlying these arguments have been filed in time. It particularly deals with the legal meaning of the terms "facts" and "arguments", and how "facts, evidence or requests" (Art. 12(4) RPBA) and "amendments (to a party's case)" (Art. 13 RPBA) relate to Art. 114(2) EPC, stipulating that the European Patent Office may disregard "facts or evidence" (but not arguments?) not filed in time.

The present appeal lies from the decision of the Opposition Division to revoke European Patent EP1968779 on the grounds of lack of novelty and inventive step in view of, among others, prior art document D51. Briefly, the patent is concerned with a method for bonding a strip of a flexible sheet to a rigid support involving a step of pressing and heating a polymerizable adhesive applied between the support and the strip.

In its grounds of appeal, the proprietor provided several arguments as to why the subject matter of claim 1 distinguishes itself from the disclosure of D51. In a subsequent written submission - filed after transfer of the patent from the original proprietor to the original opponent - the new proprietor argued that, in addition to the distinguishing features discussed previously, D51 differs from claim 1 by disclosing a thermoplastic rather than a polymerizable adhesive (the latter point having merely been noted in the grounds, but not elaborated on).

In its preliminary opinion preceding Oral Proceedings, the Board expressed its intention not to accept the late argument that the nature of the adhesive used was an additional distinguishing feature.

During Oral Proceedings, the proprietor submitted that the assessment of a late argument must be applied according to a more flexible test than facts, evidence or requests, according to the RPBA interpreted in the light of its travaux préparatoires, in which the explicit inclusion of the term "arguments" had been debated. The proprietor further held that the belated argument is a pure argument concerning the underlying technical reality, namely the nature of the adhesive used. In this case, it is not the facts of the case that have changed, but the position of the parties on the interpretation of a document. In regard of Art. 114 EPC, the expression "in due time" must be interpreted in respect of the right of the parties to a fair trial and the duty of the Board to judge whether a fact corresponds to the technical reality.

In its reasons, the Board concluded that indeed a "fact" can be understood as a factual (or allegedly such) element or a circumstance on which a party bases its claims, whereas an "argument" would mean a proposition that a party bases on one or more facts and that supports the plea ["moyen" in the decision] which the party debates.

The Board further noted that in the "Proposal to amend the Rules of Procedure of the Boards of Appeal (RPBA)" of 2002, leading to the current version of the RPBA, "arguments" had initially been included in the definition of "amendments to a party's case". According to the Board, the deletion of the words "arguments" from the final (current) version seems to express the intention of the Praesidium, after consultation with the Patent Law Committee, to exclude arguments from the discretionary power conferred to the Boards of Appeal.

The Board cited T 1794/12 of 16 January 2018, which relied on point 3.1 of the article by B. Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office" ( OJ EPO, Special Edition 2/2007, page 30):

For one thing, submissions can only be rejected on the grounds of being late if the decision-making body would not have been required to examine them and take them into consideration of its own motion. It is incumbent on every decision-maker and thus also on the boards of appeal to weigh up all the relevant legal and technical arguments in making their decision. Such arguments must therefore, at least when they involve the facts of the case and not new grounds for opposition, be taken into account at all stages of the proceedings, including the appeal stage, and cannot be rejected on the grounds of being late.

As regards previous Board decisions, the present Board is not persuaded by the reasoning behind T 1069/08 and T 1621/09 - followed by many Boards - which rely exclusively on the application of Article 13(1) RPBA from the formulation of Article 12(2) RPBA to recognize the discretion of Boards in (not) admitting late submissions. According to this Board, the interpretation of those decisions ignores the fact that Article 114(2) EPC does not justify such discretion, as previous case law has repeatedly stated. According to the Board, the EPC, and in particular its Article 114 - at least in its English version - raises a difference in the treatment of facts and arguments. In particular, Article 114(2) EPC provides for a discretionary power with regard to the facts invoked belatedly, and not for late arguments based on facts already in the proceedings. Even when drafting the RPBA, the legislator seems to have intended to maintain this distinction, as is apparent from the preparatory work on Article 13 RPBA. According to this board, the RPBA, also in view of Art. 23 thereof, although it can specify and interpret the provisions of the EPC, it cannot confer on the Boards of appeal powers which the EPC does not give them.

Thus, departing from T 1621/09, the Board found that the Boards of Appeal do not have a discretion as to the (non)admissibility of late arguments based on facts already in the proceedings.

Consequently, the proprietor's assertion concerning the nature of the adhesive used, first presented in its letter of 15 October 2015, constitutes a new argument in support of the plea which it defends, namely: that the subject matter of claim 1 is novel compared to document D51. Taking into account of this argument necessarily leads to the consideration of the applicant's argumentation concerning the inventive step of the subject-matter of claim 1. The Board comes to the conclusion that it has no discretion as to the (non)admission of these arguments. It follows that the additional difference must be taken into consideration.

With this new distinctive feature, a new line of argument has been submitted for consideration of inventive step. In view of the fact that this distinctive new characteristic may have an influence on the choice of the closest prior art, a referral of the case in the first instance is considered justified by the Board.

Tuesday, September 15, 2015 T 169/12 - late lines of attack

In appeal against the rejection of the opposition, the opponent submitted new lines of attacked based on documents that were originally mentioned in the notice of opposition, but were never used in any attack before the opposition division. The appellant (opponent) further submitted two new documents in the appeal procedure. Which of the documents and which lines of attack were admitted into the procedure in view of Art. 12 and 13 RPBA?

Tuesday, June 03, 2014 T 607/10 - Change of plans

Photo obtained from FreeDigitalPhotos.net

This is an appeal by the patent proprietor against a decision of the Opposition Division. 

The opponent, respondent in this appeal, only substantiated an objection under inventive step against claim 1 of the main request based on document E19 as the closest prior art which is combined with document E26. For the 1st, 2nd and 3th request document E26 was selected as closest prior art which was combined with E19 (and for the 2nd and 3th request, alternatively, with E4). 
In a communication the Board expressed doubts whether E19 was a particularly appropriate choice as closest prior art. 
In his submissions to the oral proceedings, probably inspired by the communication of the Board, the opponent changed his line of attack by modifying his arguments: for the main request E26 was selected as closest prior art and, according to the opponent, document E19 provides the features of claim 1 that are not present in E26. 
The proprietor informed the Board that "he will not attend the oral proceedings".

Citations from the decision:


Catchword: In deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto (see point 4.1.3 of the Reasons).

Reasons for the Decision

(...)

4. Inventive Step: Main Request

4.1 Admissibility of a new line of argument

4.1.1 In the reply to the statement of grounds of appeal, the opponent argued that the subject-matter of claim 1 of the main request did not involve an inventive step having regard to document E19 (seen as the closest prior art) in combination with document E26. At oral proceedings before the Board the opponent stated that document E19 was not to be regarded as the closest prior art, and presented a different argument based on document E26 (seen as the closest prior art) in combination with document E19.

4.1.2 Article 12(2) RPBA requires that the reply to the statement of grounds of appeal shall contain a party's complete case, and should specify expressly all the facts, arguments and evidence relied on. Article 13(1) RPBA provides that any amendment to a party's case after it has filed such a reply may be admitted and considered at the Board's discretion.
In decision T 1621/09 a detailed analysis of the implications of Articles 12 and 13 RPBA was set out, in which inter alia the following conclusion was reached:
- "new arguments, even when based on facts and evidence already in the proceedings, can have the effect of altering a party's case: the facts and evidence relied on can be assembled in different ways using different arguments. On the other hand, there will clearly be many situations where a new argument does not change a party's case. For example, it may be just be a different way of looking at the same point." (T 1621/09, point 9 of the Reasons.)

4.1.3 The present Board considers that in deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto. (See also T 1621/09, point 9 of the Reasons.)

4.1.4 In the present case, the new argument cannot be seen as merely a further development or elaboration of the opponent's previous position. The new analysis is based on a different choice of closest prior art (document E26 instead of E19), and this in turn means that, compared to the previous argument, it is necessary to consider a different set of distinguishing features, a different objective problem to be solved and different reasons (based now on document E19) why the skilled person would find it obvious to arrive at the distinguishing features having regard to the prior art.
This new argument must therefore be seen as constituting an amendment to the opponent's case within the meaning of Article 13(1) RPBA, which may be admitted and considered only at the discretion of the Board.

4.1.5 A further complicating factor is that the proprietor was not present at the oral proceedings when the question of amendment arose, although duly summoned.
An analogous problem arose in T 1621/09 (see point 40 of the Reasons) which prompted the board in that case to analyse the relationship between Articles 13 and 15(3) RPBA, and in particular the issue of "the amendment to a party's case at oral proceedings in the absence of the party prejudiced." (See point 40 et seq. of the Reasons.)
The conclusion drawn, which is endorsed by the present Board, was the following:
- "The Board therefore concludes that it remains a matter for the Board's discretion to allow an amendment to a party's case in the absence of the prejudiced party. The absence of the prejudiced party is a factor to be taken into account but does not prevent the board from allowing the amendment and proceeding to reach a decision on the basis of the case as now amended." (See point 44 of the Reasons.)

4.1.6 In the present case, the Board, in the exercise of its discretion, decided to admit the new arguments put forward by the opponent. The reasons for this are as follows:
a) In its communication under Article 15(1) RPBA (which also forms part of the appeal proceedings according to Article 12(1)(c) RPBA), the Board expressed doubts whether a convincing argument could be based on documents E19 plus E26, and indeed whether document E19 was a particularly appropriate choice as closest prior art. It was also noted that the opponent's argument based on the combination of documents E26 (seen as closest prior art) and E19 against claim 1 of the first auxiliary request would logically appear to apply to claim 1 of the main request also (as this claim included all features of claim 1 of the main request plus one extra feature). The new arguments of the opponent can therefore be seen as having been raised in response to the communication of the Board.
b) In the same communication, the Board indicated that the issues mentioned in the previous paragraph might be discussed at oral proceedings, and hence the proprietor could have foreseen that the argument which the opponent is now relying on might well become a subject for discussion. In fact, the proprietor did submit further comments on the combination of documents E26 (seen as closest prior art) and E19 in the subsequent letter dated 10 March 2014, albeit in the context of the first auxiliary request.
c) Moreover, even before the Board sent the communication under Article 15(1) RPBA, the proprietor had already commented extensively in the statement of grounds of appeal (see page 8, second paragraph) on the combination of documents E26 and E19 in relation to claim 1 of the first auxiliary request (which, as mentioned, comprises all features of claim 1 of the main request), and so the position of the proprietor in relation to this argument is part of the basis of the appeal proceedings.
d) The new argument is not incompatible with, or contradictory to, the opponent's previous case, nor does it raise any complex issues.

4.2 The combination of documents E26 plus E19

4.2.1 At oral proceedings before the Board the opponent stated that document E19 was not the closest prior art, and argued that claim 1 of the main request was not inventive based on document E26 (taken as the closest prior art) in combination with document E19. The Board also believes that document E26 is the most appropriate choice as closest prior art.

4.2.2 In the written appeal procedure there was some disagreement between the parties concerning which of the claimed features were disclosed in document E26. Although the parties' submissions were made in the context of the discussion of claim 1 of the first auxiliary request, the Board takes the view that they also apply to claim 1 of the main request for the reasons stated above (see point 4.1.6a).
The proprietor argued that only the features of the preamble were disclosed, whereas the opponent argued that features (e) and (g) could also be considered to be disclosed in document E26. In the oral proceedings, however, the opponent appeared content to argue on the basis that document E26 discloses only the features of the preamble of claim 1 of the main request, and the Board also considers this to be the correct assessment (see figure 1 and accompanying text).

4.2.3 Both parties also take the view that the features of the characterizing part contribute to achieving the object set out in paragraph [0003] of the contested patent, i.e. to provide a surge arrester with better short-circuit performance by being able to withstand an electrical/thermal breakdown of the varistor stack without mechanically falling apart. The Board can also accept that this represents a reasonable summary of the objective problem.

4.2.4 Document E19 may be seen as addressing essentially the same problem (see column 1, lines 34-46; column 2, lines 56-64), and proposes a solution whereby the stack of varistor elements (zinc oxide pellets 1) is radially surrounded by a bursting preventive bandage ("tapes" - see column 2, lines 31-33; figures 1,2) with openings ("gap zones 16" - see column 2, lines 31-37; figures 1,2), the bandage consisting of a bursting-preventive spiral (figures 1,2) of insulating material (resin-impregnated glass fibres - see column 1, line 64 to column 2, line 3) arranged in the form of a helical line around the varistor stack (figures 1,2) thereby forming said openings (16) for pressure relief in case of internal short circuit in the surge arrester (column 2, lines 56-64).
A skilled person would therefore find in document E19 a solution to the objective problem involving the provision of features corresponding to those of the second alternative of the characterizing part of claim 1 of the main request (features e, f2 and g).

4.2.5 The Board is not persuaded by the argument of the proprietor that a skilled person would not combine these two documents as they relate to two different constructions: the varistor elements in document E19 being positioned spaced apart with the axial contact pressure being generated by the springs 7, and the arrester elements in document E26 being positioned against each other with the axial contact pressure being generated by a compression member.
Whatever relevance this point may have had for the argument starting from document E19, within the context of the present argument starting from document E26 it is unconvincing. As noted above, document E19 discloses a solution to the problem of withstanding a breakdown of the varistor stack without mechanically falling apart. There is no suggestion in document E19 that the proposed solution (i.e. the use of fibres 4 and gap zones 16) is only effective within the context of the particular configuration of varistor elements disclosed in the document, nor can any reason be seen why a skilled reader would arrive at that conclusion. The Board's view is that a skilled person would not hesitate to apply the solution suggested in document E19 to other types of varistor stacks, such as those of document E26, to solve the same problem.
The argument that the teachings of these two documents could not be combined as the "fibre winding 4 from E19 would in this case interfere with the position of the compression member 8 in E26" is also unconvincing. The Board does not believe that a skilled person would find any particular difficulty in combining these two simple mechanical features in a single device.

4.2.6 For the above reasons, the Board judges that claim 1 of the main request does not involve an inventive step within the meaning of Article 56 EPC 1973.

(...)

Order

For these reasons it is decided that:
The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T060710.20140410. The whole decision can be found here. The file wrapper can be found here.