T 0384/16 - Claim interpretation as factual allegation

Key points

• The Board decides to not admit the new objection under Article 123(3) into the proceedings. 
• The Board: “the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings” (emphasis added).
• Let's see what the Board considers the "allegation of fact” in this case.
• The Board: “had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" [recited in claim 1 before the amendment] and a paint or coating composition "for improving intercoat adhesion" [recited in claim 1 after the amendment].”
• The Board does not identify any particular disputed factual allegations underpinning the proposed claim interpretation. Therefore I conclude that proposing a claim interpretation as such is treated as an "allegation of fact” by this Board (3.3.02). See also T1875/15 (same Board 3.3.02).
• I would say that considering claim interpretation (as such) to be a matter of fact is not an entirely common view (cf. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 US 318 (2015)). The advantage for the Board is that they can hold the new objection inadmissible. The logical consequence may be that however, perhaps, the Boards are obliged to consider timely evidence filed by the parties to proof such ‘facts’, e.g. expert declarations.

EPO T 0384/16 -  link

6.3 Admittance of the objection under Article 123(3) EPC

The objection is based on the change of claim category effected in claim 1 together with the change of the feature "with improved intercoat adhesion" to "for improving intercoat adhesion". According to respondent 2, this change of claim category extended the scope of protection in contravention of Article 123(3) EPC.

Respondent 2 did not raise any objection regarding Article 123(3) EPC in its reply to the statement of grounds of appeal, either explicitly or implicitly. As not disputed by respondent 2, it had been raised for the first time in its letter dated 13 November 2019. Consequently, in the same way as for the objection under Article 123(2) EPC, it is at the board's discretion to admit or not to admit this new objection pursuant to Article 13(1) RPBA 2007.

Had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" and a paint or coating composition "for improving intercoat adhesion".

Consequently, the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings.