T 0047/18 - The Board is too fast

Key points

• In this opposition appeal, the Board does not admit a new attack of the opponent.
• The Board reviews the procedural history of the case and then concludes " Thus, the appellant [opponent] could have raised the objections in question at several instances in the proceedings before the opposition division. There is, therefore, no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about 2 months before the oral proceedings before the board." 
• "  In this context the appellant submitted at the oral proceedings that it was surprised that the summons had been issued only a little more than two months after the respondent had filed its reply to the grounds of appeal and that, had the oral proceedings taken place later, the objections would not have been filed only two months before them. However, this argument is flawed because these objections were, in any event, raised after the appellant had filed its statement of grounds, and this is what is decisive for the discretion under Article 13(1) RPBA." 
• Statement of Grounds filed 20.02.2018, reply filed 09.07.2018, summons 20.09.2018, oral proceedings 06.02.2019!
• The Board also comments on whether the attacks are facts or argument (in view of  the 'rule' that new arguments are always admissible T 1914/12)
• " Furthermore, the objections in question also do not constitute merely a new argument (cf. T 1914/12 []) because they go beyond submissions serving to underpin the facts, evidence and grounds filed in good time (see Keussen in Benkard, EPÜ, 3rd ed. 2019, Art. 110, paragraph 52). Rather, they are based on new legal grounds (cf. G 4/92, Reasons 10: "des moyens nouveaux") that were not addressed before in the appeal proceedings." 

EPO T 0047/18

IX. The arguments of the appellant, as far as relevant for the present decision, may be summarised as follows:

The objections raised in the letter dated 4 December 2018 should be admitted into the proceedings. They were raised for the first time after the expiry of the time limit for filing the grounds of appeal and after the issuance of the summons to oral proceedings. Had the board not have issued the summons so early, these objections would have been raised before the issuance of the summons.

Reasons for the Decision

1. Admissibility of appellant's objections under Articles 84 and 123(2) EPC

1.1 The statement of grounds of appeal contains neither an objection of lack of clarity of the claims nor an objection under Article 123(2) EPC. Rather, it contains only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections (see V and IX above).

1.2 According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case. Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA (see for instance T 996/15, Reasons 3.1, for a new objection under Article 84 EPC; T 682/11, Reasons 3.2, for a new objection under Article 123(3) EPC; T 1307/13, Reasons 3, for a new objection regarding the validity of the priority claim).

1.3 Furthermore, the objections in question also do not constitute merely a new argument (cf. T 1914/12, Reasons 7 to 7.2) because they go beyond submissions serving to underpin the facts, evidence and grounds filed in good time (see Keussen in Benkard, EPÜ, 3rd ed. 2019, Art. 110, paragraph 52). Rather, they are based on new legal grounds (cf. G 4/92, Reasons 10: "des moyens nouveaux") that were not addressed before in the appeal proceedings.

1.4 The boards of appeal must exercise this discretion in view of, inter alia, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

1.5 The present main request was filed as auxiliary request 2 in the proceedings before the opposition division by letter dated 31 July 2015. In its letter dated 4 March 2016, the then opponent objected to this request only for lack of inventive step (see page 9, item IV ). In its communication dated 15 September 2016 accompanying the summons, the opposition division stated that the amendments in auxiliary request 2 appeared to comply with, inter alia, Articles 84 and 123(2) EPC and that "this has not been challenged by the Opponent" (see item 19 of the communication). According to the minutes of the oral proceedings before the opposition division, the opponent had only objections under Article 56 EPC against this request (see item 8 and following of the minutes). Also, the impugned decision contains the same observation as in the communication accompanying the summons (see II above).

Thus, the appellant could have raised the objections in question at several instances in the proceedings before the opposition division.

There is, therefore, no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about 2 months before the oral proceedings before the board. In this context the appellant submitted at the oral proceedings that it was surprised that the summons had been issued only a little more than two months after the respondent had filed its reply to the grounds of appeal and that, had the oral proceedings taken place later, the objections would not have been filed only two months before them.

However, this argument is flawed because these objections were, in any event, raised after the appellant had filed its statement of grounds, and this is what is decisive for the discretion under Article 13(1) RPBA.

Taking these aspects into account, considering the state of the file and in particular procedural economy, the board did not admit the appellant's objections under Article 84 and 123(2) EPC into the proceedings.