28 Feb 2018

T 0846/16 - Admissibility arguments before appeal

Key points

  • In this opposition appeal, the Board considers the opponents's appeal admissible. The patentee had argued that Rule 99(2) was not complied with, because opponent's line of argumentation in the Statement of grounds was new. The Board considers that "this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division."
  • "The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division. Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings. Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC."
  • The Board then decides that essentially because of the same reasons, the new arguments are admissible under Article 12(4) RPBA.
  • As a comment, Article 12(4) RPBA gives a power to hold inadmissible  "facts, evidence or requests " filed with the Statement of grounds, but does not refer to holding arguments inadmissible. 
  • As a further comment, There is some precedent for considering the admissibility of arguments before considering the admissibility of the appeal (e.g. T 0501/09, appeal inadmissible because based on newly filed documents, which were inadmissible, in contrast recent T 0509/13). However, where Article 12(4) RPBA does not give a ground for holding arguments inadmissible, the same can not be factor for admissibility of appeal.

EPO T 0846/16 -  link

Reasons for the Decision
1. Admissibility of the appeal (Rule 101(1) EPC)
1.1 The appeal [of opponent] is admissible under Rule 101(1) EPC and complies with Article 12(2) RPBA.
Rule 101(1) EPC refers to Rule 99(2) EPC which requires that the statement setting out the grounds of appeal shall indicate the reasons for setting aside the impugned decision. Similar requirements can be found in Article 12(2) RPBA according to which the statement setting out the grounds of appeal shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed.
1.2 The respondent argued that these requirements are not complied with since there were allegedly no reasons for setting aside the decision and further the statement setting out the grounds of appeal concerned a new case.
The board does not share this view. Indeed, the statement setting out the grounds of appeal comprises a new line of argumentation of the opponent. However, this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division.
Further, the statement setting out the grounds of appeal clearly states that the claims underlying the decision of the opposition division go beyond the application as filed, see for example page 3, second paragraph of the statement. From this content it can be deduced that the opponent wished the impugned decision to be set aside based on his new argumentation.
1.3 According to the impugned decision, the amended feature H) reading "the communication interface (27) is isolated from the first power source (40)", which formed part of the independent claims as granted, does not contravene Article 123(2) EPC. However, the opposition division had in the annex to the summons to oral proceedings indicated that the subject-matter of claim 1 of the patent, that already contained the disputed feature H), contravened Article 123(2) EPC. Thus, there was an unexpected change in the opinion of the opposition division during the oral proceedings.
1.4 The patent proprietor had also changed their argumentation only during the oral proceedings before the opposition division.
In their reply to the opposition dated 12 August 2014, the patent proprietor argued that the amended feature H) was allowable since the description of the A1 publication stated in paragraph [0008], that the isolation of the inverter system from the first power source is optional. Further, the text of the patent had, before grant, been corrected under Rule 139 EPC to state in paragraph [0031] that "the GND of the motor control circuit Ca has the same electrical potential (high voltage system GND) as the GND of a high voltage circuit Cb to which a high voltage is supplied from the high voltage power source". On the basis of this correction under Rule 139 EPC the patent proprietor argued that the motor control Ca was not isolated from the first power source since both shared the same ground (GND).
In response to the summons to oral proceedings dated 18 September 2015 the patent proprietor had argued that the amendments underlying the objection of the opponent under Article 123(2) EPC were the consequence of an error in the translation and that the opponent's arguments were therefore not relevant.
Thus, up until the oral proceedings before the opposition division, the patent proprietor had consistently stated that the amendment of both the description and claims of the patent as granted was the consequence of a translation error.
During the oral proceedings before the opposition division, however, the patent proprietor argued that there had been a mistake in originally filed claim 1 by claiming that the inverter system is isolated. The correct statement was "that the inverter uses an isolated inverter", which was evident from the description. The amendment was "thus not due to an error of translation". The fact that this statement was made with respect to an objection under Article 83 EPC has no bearing on its content, which is that during the oral proceedings before the opposition division the patent proprietor no longer stated that the amendments to the claimed subject-matter served to correct a translation error.
The patent proprietor's new arguments obviously caused the opposition division to reverse its opinion on this objection.
1.5 The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division.
Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings.
Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC.
The appeal is therefore admissible.
2. Admissibility of the appellant's new arguments (Article 12(4) RPBA)
Regarding the admissibility of the appellant's arguments under Article 123(2) EPC as such, the same reasoning as with respect to the admissibility of the appeal applies.
As discussed above, the argumentation of the patent proprietor regarding Article 100(c) EPC had changed only during the oral proceedings before the opposition division. Therefore, the board considers it as appropriate that the opponent brought forward new arguments in reaction to the change in argumentation of the patent proprietor and the change in the opinion of the opposition division in the opponent's statement of grounds of appeal.
The appellant's arguments regarding Article 123(2) EPC are therefore also admissible.

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