T 0603/14 - Novelty attack to inventive step attack

Key points

• In this opposition appeal, the opponent had used D1 and D3 up to the oral proceedings before the Board only to support objections of lack of novelty of claim 1 and claim 25. During the oral proceedings, the Board concludes that the claims are novel and the opponent raises an objection of lack of inventive step based on the same documents. 
• The Board does not admit the new attack.  "At least the allegation that [these documents] led, in combination, to a lack of inventive step is to the Board a new fact." 
• As a comment, the particular approach of calling attacks 'facts'  is due to T1914/12.
• The Board: " the [opponent] did not give any reason for presenting that attack only towards the end of the oral proceedings rather than at such a time before the oral proceedings as to allow the Board and the respondent to appropriately address it. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the Board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the Board. The [patentee] indicated that he would need an appropriate amount of time to react to the objection. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings." 
• As a comment, "the purpose of the communication of a board of appeal pursuant to Article 15(1) RPBA is to prepare for the oral proceedings and it is not an invitation to the parties to make further submissions or to file further requests" (T0799/17). So the annex to the summons is not an invitation to make further submissions but the deadline given therein is still a deadline.

EPO T 0603/14 -  link

7. Admissibility of a late-filed inventive step objection

7.1 The Board exercised their discretion not to consider the late filed objection of lack of inventive step in view of D1 and D3.

7.2 The appellant raised this objection for the first time in the oral proceedings before the Board. The documents form part of the appeal proceedings.

7.3 The objection represents an amendment to the appellant's case and may as such, pursuant to Article 13(1) RPBA, be admitted and considered at the Board's discretion. Document D1 and D3 had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step is to the Board a new fact.

7.4 The appellant did not present a convincing justification for the late submission of this alleged new fact. The Board's preliminary opinion on the disclosure of D1 did not introduce any new aspects into the discussion. It merely did not follow the appellant's conclusions. Even accepting arguendo that it did prompt the new objection, the appellant did not give any reason for presenting that attack only towards the end of the oral proceedings rather than at such a time before the oral proceedings as to allow the Board and the respondent to appropriately address it. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the Board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the Board. The respondent indicated that he would need an appropriate amount of time to react to the objection. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party cannot be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art, see also T0181/17, reasons 7.4.

8. For the above reasons, the Board accedes to the respondent's main request and rejects the appellant's request.

Order

For these reasons it is decided that:

The appeal is dismissed.