T 2053/13 - Fact or argument

Key points

• In this opposition appeal, the OD had not admitted the opponent's inventive step attack starting from D3. D3 had been submitted with the Notice of opposition but was mentioned only in a footnote in the reasoned statement of opposition. The inventive step attack was only presented at the oral proceedings before the OD.
• The opponent submitted that : "since that submission was a new argument rather than a new fact, the opposition division had not had the discretionary power pursuant to Article 114(2) and Rule 116(1) EPC to refuse its admission into the proceedings." 
• The Board; "According to Enlarged Board Opinion G 4/92 [r. 10], (new) arguments are reasons based on the facts and evidence which have already been put forward." 
• " Rather than merely present an additional argument in support of a chain of reasoning already known in a factual context already established, the appellant [opponent] changed its case." 
• " Thus, the appellant's submission related to a new alleged fact. Filing a piece of evidence (in the present case, document D3, filed with the notice of opposition) does not mean that any alleged fact or objection potentially derivable from that evidence is also introduced into the proceedings. Since D3, in a different context than previously substantiated, was to be used as evidence for the new objection regarding lack of inventive step, the factual basis of the discussion would have changed if that submission had been admitted." "In that context, the board's view concerning alleged facts is in line with decision T 926/07 (reasons 2.2.1) [sic! there is no r..2.1]. The interpretation given in decision T 604/01 was considered by the board as not applicable to facts not submitted in due time, as addressed by Article 114(2) and Rule 116(1) EPC."
• The remark about T604/01 refers to the Board in the present decision because T604/01 is not cited at all in T926/07.  I also don't understand it. In T604/01, the substantive objections under Article 123(2) against the amended claims were made only during the oral proceedings before the OD (T0604/01, III, IV, V, 6.1: "The Opposition Division held that the appellant's submission made during the oral proceedings concerning Article 123(2) and (3) EPC included late-filed facts (see point V above). In the Board's view, this conclusion was based on a wrong interpretation of the expression "facts". Facts in the legal sense are to be understood as the circumstances and incidents of a case, looked at apart from their legal bearing (cf. Oxford English Dictionary, second edition)."
• Back to the present decision: "The board therefore concludes that, since the inventive-step objection starting from the disclosure of document D3 was based on a new alleged fact and was first presented two months after the final date for making written submissions according to Rule 116(1) EPC, the opposition division had the discretionary power pursuant to Article 114(2) EPC and Rule 116(1) EPC to decide about its admission into the proceedings."

• As a comment, the actual sentence in G 4/92 is: "In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward." G4/92 here does not say anything about the difference between facts and arguments.
• Finally, does T 2053/13 indicate that facts are not late filed if they are submitted by the Rule 116 date?

EPO T 2053/13 - link

7. Procedural violation and reimbursement of the appeal fee (Articles 113(1) and 114(2) and Rule 103(1)(a) EPC)

7.1 The appellant contended that the opposition division committed a substantial procedural violation in not admitting the appellant's (then the opponent's) submission objecting to lack of inventive step on the basis of an assessment starting from the teaching of document D3. In the appellant's view, since that submission was a new argument rather than a new fact, the opposition division had not had the discretionary power pursuant to Article 114(2) and Rule 116(1) EPC to refuse its admission into the proceedings. Even assuming the opposition division had disposed of such discretionary power, it must be concluded that it had exercised that power in an unreasonable manner.

7.2 The board does not reach the same conclusions, for the following reasons:

7.2.1 While document D3 itself was filed with the notice of opposition, it was not presented as the closest prior art in the appellant's initial submissions. In fact, D3 was never mentioned except in a footnote (see the notice of opposition, page 13), as supplementary evidence on the subject of bread improvers, in the context of a discussion of certain dependent claims. Beyond that marginal issue, no substantiation for the introduction of D3 was given. The appellant's reasoning on inventive step started from the teaching of documents D1/D2 (regarded as the closest prior art).

7.2.2 It was undisputed that the inventive-step assessment starting from the technical teaching of document D3 was first presented by the appellant on the day of the oral proceedings before the opposition division, two months after the final date for making written submissions according to Rule 116(1) EPC.

7.2.3 According to Enlarged Board Opinion G 4/92 (OJ EPO 1994, 149, reasons 10), (new) arguments are reasons based on the facts and evidence which have already been put forward.

[G 4/92: 10. As regards new arguments, the requirements of Article 113(1) EPC have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during oral proceedings, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward.] 

7.2.4 Rather than merely present an additional argument in support of a chain of reasoning already known in a factual context already established, the appellant changed its case.

The submission in question introduced a whole new chain of reasoning based on the allegation, made for the first time in the opposition proceedings, that document D3 was a promising springboard to the invention as claimed, and leading up to the conclusion that the claimed subject-matter lacked inventive step starting from the teaching of document D3.

Thus, the appellant's submission related to a new alleged fact. Filing a piece of evidence (in the present case, document D3, filed with the notice of opposition) does not mean that any alleged fact or objection potentially derivable from that evidence is also introduced into the proceedings. Since D3, in a different context than previously substantiated, was to be used as evidence for the new objection regarding lack of inventive step, the factual basis of the discussion would have changed if that submission had been admitted.

7.2.5 In that context, the board's view concerning alleged facts is in line with decision T 926/07 (reasons 2.2.1). The interpretation given in decision T 604/01 was considered by the board as not applicable to facts not submitted in due time, as addressed by Article 114(2) and Rule 116(1) EPC.

7.2.6 The board therefore concludes that, since the inventive-step objection starting from the disclosure of document D3 was based on a new alleged fact and was first presented two months after the final date for making written submissions according to Rule 116(1) EPC, the opposition division had the discretionary power pursuant to Article 114(2) EPC and Rule 116(1) EPC to decide about its admission into the proceedings.

7.2.7 The board, within the scope of its limited powers to review discretionary decisions taken by a department of first instance, has no reason to find fault with the opposition division's decision in this regard, for the following reasons:

(a) The subject-matter of the claim requests presented by the respondent up until the oral proceedings before the opposition division remained within basically the same general framework with respect to the technical features defining the process and product claimed (see the former main request, i.e. the claims as granted, and former auxiliary request 1, identical to the present main request). The appellant's inventive-step objection starting from the teaching of document D3 could have been presented just as well, and in the same form, at the outset of the opposition proceedings and was not occasioned by any change in the subject of the opposition proceedings.

(b) Whether document D3 was regarded as the closest prior art during pre-grant proceedings is not relevant, since documents which may have played a part in pre-grant proceedings and the objections for which they were previously used are not automatically part of the opposition proceedings. As pointed out by the opposition division, while document D3 is mentioned in paragraph [0011] of the patent in suit, it is not highlighted as particularly pertinent (see the decision under appeal, reasons 10.1.2).

In view of the duty of an opponent to present its case in the notice of opposition (Rule 76(2)(c) EPC), there is no obligation on the patent proprietor or the opposition division to speculate on further possible objections never mentioned by the opponent. It is reasonable to believe that the appellant's submission on the assessment of inventive step starting from the teaching of document D3, presented only in the late afternoon on the day of the oral proceedings before the opposition division (see the Minutes, 7.1 and 7.2), was in these circumstances surprising to both the respondent and the opposition division, which had not been duly notified by the appellant of that new objection.

As pointed out in Opinion G 4/92 (supra, reasons 7), for a party to wait until oral proceedings before presenting new facts or evidence that could have been submitted earlier may be sanctioned by the competent department of the EPO by disregarding such matter in accordance with Article 114(2) EPC.

(c) The opposition division was correct in applying the criterion of prima facie relevance, which is an appropriate criterion in the case of submissions which were not filed in due time.

(d) The appellant was given the opportunity to present its arguments in favour of the admission of its inventive-step objection starting from document D3 (see the Minutes of the oral proceedings before the opposition division, 7.2 to 7.6). Thus, its right to be heard pursuant to Article 113(1) EPC was respected.

(e) The opposition division arrived at the conclusion that document D3 presented, prima facie, a less promising springboard for arriving at the claimed subject-matter than documents D1/D2. Even if that conclusion were to be erroneous, that would not amount to a procedural violation but at most to a substantive error in assessing the relevance of a document.

7.2.8 Hence, the board arrives at the conclusion that the opposition division did not exercise its discretion in an unreasonable manner.

7.2.9 Not admitting the inventive-step objection starting from document D3 was also in accordance with the practice that, if no substantiation is provided together with a document in the notice of opposition, the submissions made later in relation to such a document are subject to discretionary admission (see points 7.2.1 and 7.2.4 above). Otherwise, the proceedings could be front-loaded by submitting a large number of documents without substantiation.

7.3 In conclusion, the board has no reason to criticise the discretionary decision of the opposition division not to admit, in the given procedural circumstances (see the decision under appeal, section 10 and point VI above) the use of document D3 by the appellant as the starting point in the assessment of inventive step.

7.4 Since no substantial procedural violation occurred, the requirements under Rule 103(1)(a) EPC for a reimbursement of the appeal fee are not met.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The request for reimbursement of the appeal fee is rejected.