16 Nov 2016

T 0710/15 - Late arguments, documents, and attacks

Key points
  • " Article 114(2) EPC confers on the opposition division the discretionary power not to admit new facts or evidence when "not submitted in due time by the parties concerned". It is not a basis to disregard arguments not submitted in due time. " 
  • " Rule 116(1) EPC (former Rule 71a EPC 1973) should therefore not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant." 
  • " As to the alleged lack of inventive step in view of document E1 alone, submitted in writing within the time limit set under Rule 116(1) EPC, the board notes that lack of novelty over document E1 was already substantiated in the notice of opposition (lack of inventive step was argued with regard to different prior art). Under these circumstances, a specific substantiation of the ground of lack of inventive step starting from E1 in the notice of opposition was not necessary - or indeed generally possible after arguing lack of novelty over E1 []. It is true that in its reply to the notice of opposition the patentee had identified the features distinguishing the subject-matter of granted claim 1 from E1. However, considering that oral proceedings had been requested by the opponent and thus further action by the opposition division was in any case to be expected, there was no objective reason for the opponent to reply immediately with an objection of lack of inventive step starting from E1." 
T 0710/15 -  link


Reasons for the Decision
1. Alleged partiality of chairman of opposition division
1.1 The objection of partiality fails, for the reasons explained below. The board does however consider that the opposition division committed errors of judgement in not admitting some of the opponent's submissions.
1.2 The generally accepted principle that nobody should decide a case in respect of which a party may have good reasons to assume partiality applies also to the members of EPO first-instance departments taking part in decision-making activities affecting the rights of any party (see "Case Law of the Boards of Appeal of the European Patent Office", 7th edition 2013, page 636). This reflects a basic principle of procedural law in the EPC contracting states (cf. Article 125 EPC), namely that all the members of a tribunal must be above any suspicion of bias. As held by the Enlarged Board of Appeal in G 5/91 (OJ EPO 1992, 617, Reasons, point 6), the question whether or not an objection of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case.
1.3 The fact that the patentee had asked for the replacement of the chairman, and that this request was not granted by the latter's director, does not constitute, in the board's view, a sufficient reason for assuming that the opposition division, and in particular its chairman, were unable to act without bias. Furthermore, the fact that no questions were asked by the members of the opposition division at the oral proceedings cannot be taken as an indication of misconduct, as this is normal practice when the facts and arguments have been presented by the parties in a sufficiently clear and exhaustive manner.
1.4 The appellant also alleged that the partiality of the opposition division became evident by the decisions taken in the course of the oral proceedings, in particular:
1.4.1 A new argument with respect to Article 123(2) EPC in relation to granted claim 1 (basically an objection under Article 100(c) EPC) was put forward and discussed, with regard to a feature in granted claim 1 which had not been submitted before in writing (see contested decision, point 1.3). The opposition division considered this objection to be a new and late-filed fact, and did not admit it under Article 114(2) EPC.
Article 114(2) EPC confers on the opposition division the discretionary power not to admit new facts or evidence when "not submitted in due time by the parties concerned". It is not a basis to disregard arguments not submitted in due time (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, III.B.2.3.1, III.C.4.4, IV.C.1.4.4; see also G 4/92). Raising during oral proceedings a new objection under a ground for opposition previously validly invoked might be belated. However, the issue at stake is whether the opponent has raised a new argument or a new fact, i.e. whether in the present case the opposition division was right to invoke Article 114(2) EPC when not admitting the allegedly late-filed objection.
New arguments are generally understood as new reasons based on the facts and evidence which have already been put forward. The board endorses the view taken in case T 604/01 (see point 6.1 of the Reasons) or T 395/00 (see point 11 of the Reasons) with regard to amendments under Article 123 EPC, namely that the fact and evidence necessary in order to examine whether or not the patent and claims comply with the requirements of Article 123(2) EPC are the amendment as such in view of the application as filed and the patent as granted, i.e. the evidence available when filing the opposition.
In the present case, the ground for opposition under Article 100(c) EPC raised in the notice of opposition was discussed during oral proceedings with regard to two features of granted claim 1 (contested decision, points 1.1 and 1.2), one of which related to the "first part" being a "flat base part". However, the amendment in claim 1 as granted which further specifies the "first part" reads "...in such a way that said first part (9) is a flat base part and is arranged to be connected to different types of said second part (9') for different types of interconnection between the wiper blade (2) and the oscillating arm (8)", i.e. it combines two features ("and"), the second of which was objected to under Article 123(2) EPC for the first time during oral proceedings. The board considers that in this case the same "amendment" is concerned, namely which features have to be included when further specifying the first part on the basis of features taken from the description (e.g. on the basis of page 2 of the application as filed), which raises the question of whether an intermediate generalisation is considered to be admissible. This issue was already mentioned in the notice of opposition (see page 3, point 1.2.1). It is noted that the case at hand differs from T 187/01, where an objection under Article 100(c) EPC raised for the first time in appeal against a granted feature which had not been contested before was considered to be a new fact and therefore disregarded.
Therefore, the board finds that the new objection does not introduce new facts or evidence, but merely a new argument under a ground of opposition already validly raised. Thus, the opposition division was wrong in invoking Article 114(2) EPC when dismissing this new objection. Such an error of judgement does not however prove the partiality of the chairman or the opposition division.
1.4.2 The opposition division considered document E23 and the objection of lack of inventive step over E1 combined with E23 to be a late-filed fact and therefore also document E23 to be late-filed, although submitted on the final date for written submissions set under Rule 116(1) EPC (contested decision, point 2.3.1.2).
However, the legal and factual framework of opposition proceedings is defined in principle by the notice of opposition, as set out in Rule 76(c) EPC (former Rule 55(c) EPC 1973). As concluded in decision T 1002/92, late-filed facts, evidence and related arguments which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC 1973 in support of the grounds of opposition should only exceptionally be admitted into the proceedings if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the patent. Rule 116(1) EPC (former Rule 71a EPC 1973) should therefore not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant.
Thus, the board sees nothing wrong, and in particular no indication of partiality, in the way the opposition division exercised its discretion under Article 114(2) EPC by not admitting late-filed document E23 and related arguments, taking into consideration the criterion of prima facie relevance.
The appellant also alleges in this context that the basis of the reasoning was not correct as it refers to amendments made to claim 1. The contested decision states (page 10, last paragraph) that "this new fact has nevertheless not been raised in response to amendments to claim 1". This passage does not refer to "amendments" as the basis of the reasoning given, but implies that filing new documents and further objections might be justified if filed in response to amendments to claim 1.
The board also finds that the opponent had ample opportunity to argue on the prima facie relevance of document E23, since the minutes of oral proceedings explicitly state (see points 23 to 25) that document E23 had been "sufficiently substantiated" in writing, and that the parties were also given the opportunity to exchange their views with regard to document E23 during the oral proceedings. The opponent explained e.g. the basic teaching of E23 (point 25: "that different types of arms can be connected with the blade in E23") in response to the patent proprietor disputing the relevance of E23. Moreover, as can be derived from the contested decision (see point 2.3.1.2), in its letter dated 17 November 2014 the opponent had substantiated an objection of lack of inventive step over E1 in combination with E23, which included arguments relating to the prima facie relevance of E23. Therefore, also the opponent's right to be heard had been respected.
1.4.3 As to the alleged lack of inventive step in view of document E1 alone, submitted in writing within the time limit set under Rule 116(1) EPC, the board notes that lack of novelty over document E1 was already substantiated in the notice of opposition (lack of inventive step was argued with regard to different prior art). Under these circumstances, a specific substantiation of the ground of lack of inventive step starting from E1 in the notice of opposition was not necessary - or indeed generally possible after arguing lack of novelty over E1 (in this respect, see e.g. T 597/07, or T 131/01). It is true that in its reply to the notice of opposition the patentee had identified the features distinguishing the subject-matter of granted claim 1 from E1. However, considering that oral proceedings had been requested by the opponent and thus further action by the opposition division was in any case to be expected, there was no objective reason for the opponent to reply immediately with an objection of lack of inventive step starting from E1.
Accordingly, the board finds that the opposition division was wrong in judging that an objection of lack of inventive step in view of E1 should have been raised at an earlier stage of the proceedings and in therefore not considering this line of argument (see contested decision, point 2.3.2.2.4.1). The same applies to its refusal to admit a substantiation of this inventive- step objection during oral proceedings as late-filed under Article 114(2) EPC (see contested decision, points 2.3.2.2.4.2 and 2.3.2.2.4.3). Again, however, such errors of judgement do not indicate that the chairman or the opposition division was partial.
1.5 It follows from the above that the decision of the opposition division not to admit the new argument based on Article 123(2) EPC and the objections of lack of inventive step over E1 alone and E1 combined with E23 must be set aside. The above argument and objections are thus introduced into the proceedings.
2. Not remitting the case to the department of first instance
2.1 According to Article 111(1) EPC, the board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It is established case law (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7.6.1) that there is no absolute right to have an issue decided upon by two instances and that e.g. the general interest in bringing the proceedings to a close within an appropriate period of time has to be taken into account. 2.2 Considering that the new argument in respect of Article 123(2) EPC does not per se justify a remittal and that the opposition division has already commented, in the contested decision, on the new objections of lack of inventive step (see page 11, stating that- "separation of parts of the connecting device are contrary to the teaching of E1" and- "E23 comprises a totally different construction of ... the connecting device, ... which hampers prima facie a combination with the wiper of E1"),the board in exercising its discretion conferred by Article 111(1) EPC has decided not to remit the case to the department of first instance, but to take a decision on the merits of the case. | |

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