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.

Monday, November 19, 2018 T 839/14 - Fresh ground before opposition division

Fresh ground

In the written submissions before oral proceedings in first instance opposition, the opponent argued for the first time that the granted patent contained added subject matter. The opposition division refused to allow the new grounds to be added in the proceedings,as it didn't consider it to be prima facie relevant. The decision does contain argumentation though, why the division did not consider there to be added subject matter. The board concurs with the decision not to allow the new ground. Accordingly, the argumentation regarding the added matter which is in the opposition divisions decision is not reviewed by the Board. 

Tuesday, July 24, 2018 T 1029/14 Keep Out! Fresh ground of opposition?

Like the decision discussed in the previous blog, the Board in this opposition appeal case refused to admit, due to lateness of the submission, an inventive step attack based on a single document (D1), which had been used in opposition to substantiate lack of novelty only. The ground of inventiveness was mentioned in the Notice of opposition, but not substantiated. The Board's refusal under Art 13(3) RPBA was unsurprising, given that the arguments for lack of inventiveness were presented for the first time only 2 working days before oral proceedings were held, and the patent proprietor would have needed an adjournment to prepare its response.

The Board went further, however, and also considered whether this inventive step attack constituted a fresh ground of opposition that could be admitted into proceedings only with the permission of the patent proprietor. The appellant argued that the new attack was admissible, for the reasons allowed in T 0131/01.

The Board took the view that the facts in this case were different, because the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel. The reasoning of T 448/03 was followed, and the Board concluded that an objection concerning inventive step is to be considered a fresh ground, if it is raised for the very first time in the appeal proceedings, irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

Wednesday, September 28, 2016 T 2091/12 - Changing a fresh ground to an old ground

Some fresh ground coffee

With its appeal, the opponent filed a new novelty attack based on prior use. He also filed evidence supporting the prior use allegation. 

Novelty was not a ground of opposition in first instance. In the summons, the board notes that it is thus a fresh ground of opposition. As the proprietor did not agree to having it introduced in the proceedings, the fate of this new attack seems ensured. 

However, in his written submissions the opponent files an inventive step attack based on prior use, and supported by the evidence he filed with his statement of grounds. Alas, by this time the board considers it too late in the appeal proceedings, and does not admit the new attack. 

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

[...]

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.