6 Aug 2018

T 0073/15 - New novelty attacks in appeal

Key points

  • The OD had rejected the novelty attacks. The opponent submit new attacks based documents filed for the first time in appeal. Opponent argues that the attacks are admissible in view of the amendments made by proprietor before the OD. 
  •  'The amendments in question had however been made at the earliest possible stage of the opposition procedure, namely in the response to the notice of opposition.
    Accordingly, had the opponent considered that these amendments necessitated the presentation of further documents, this could and should have been done at that stage of the opposition procedure (cf. Article 12(4) RPBA).
    The [opponent] argued that since it had been considered that the claims suffered from other defects, it was not thought necessary to present further documents.
    Whilst this argument gives some insight into the strategy adopted by the opponent, it does not provide any explanation or justification as to why the documents and associated arguments were not submitted during the proceedings before the opposition division, but only shows that a different approach had been chosen." 



EPO T 0073/15 -  link

2. Novelty - admittance of the objection raised in the statement of grounds of appeal
The appellant did not contest the conclusions of the decision under appeal with respect to novelty based on the documents available in the opposition proceedings but advanced a new attack, based on documents filed for the first time with the statement of grounds of appeal.
As justification for the submission of these documents the appellant referred to the presentation of amended claims by the respondent.
The amendments in question had however been made at the earliest possible stage of the opposition procedure, namely in the response to the notice of opposition.
Accordingly, had the opponent considered that these amendments necessitated the presentation of further documents, this could and should have been done at that stage of the opposition procedure (cf. Article 12(4) RPBA).
The appellant argued that since it had been considered that the claims suffered from other defects, it was not thought necessary to present further documents.
Whilst this argument gives some insight into the strategy adopted by the opponent, it does not provide any explanation or justification as to why the documents and associated arguments were not submitted during the proceedings before the opposition division, but only shows that a different approach had been chosen.
Accordingly the appellant has failed to demonstrate to the Board's satisfaction that it should not have advanced the arguments and documents filed with the statement of grounds of appeal as the basis of a new novelty attack during the proceedings before the department of first instance. Moreover there were several reasons why the evidence provided seems doubtful as detailed in the communication sent by the Board in preparation of the oral proceedings.
The Board therefore considers it appropriate to exercise its power pursuant to Article 12(4) RPBA to hold inadmissible the new novelty objection based on D14a, D14b, D15 and D16.
There being no further novelty objections raised in appeal proceedings, the requirements of Article 54 EPC are held to be satisfied.

2 comments:

  1. The decision is also interesting in that not only the claims, but also the description make references to a series of norms, without ever giving the date of issuance of the norm.

    As norms can vary with time, it appears that it is an absolute necessity to not only state the norm, but also the version used when filing an application. See Guidelines G-IV, 7.6, last §.

    The Board has completely disregarded this problem when it concluded that the disclosure is sufficient. That Boards are not bound by the Guidelines does not change the fact that not indicating the date of a norm can have dear consequences, as it cannot be added after filing.

    ReplyDelete
    Replies
    1. Thanks for the comment (and careful review of the case), but I don't see the problem. Things like Melt Flow Rate measurements (ISO 1133) do not really change over the years. In any case, A84 is not a ground for opposition.

      Delete

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