Friday, October 11, 2019 T 124/16 - New argument based on admitted documents inadmissible in appeal OP

New arguments are rejected

This is another case about late documents or arguments. In the previous opposition proceedings, documents E12 and E14 were both filed by the opponent after the 9 month period. Although document E12 was admitted into the proceedings, document E14 was not. 

The opponent filed an appeal against the first instance decision, formulating inventive step objections based on both E12 and E14. When at the appeal oral proceedings document E14 was also not admitted, the opponent tried to use document E12 to formulate new inventive step objections. 

Although both the document E12 and inventive step arguments based on E12 were already in the procedure, the board nevertheless found that these new objections could not be regarded as a further development of the opponents case. As they were not prima facie relevant either, these objections were not admitted into the case. 

The decision is in German. A machine translation of the relevant part is provided, followed by the original. 

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.

Thursday, August 24, 2017 T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 

In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 

The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

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, 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.