T 1875/15 - New allegations of fact

Key points

• The Board does not admit the new objection of the opponent.
• The headnote: “a board has in principle no discretion for not admitting late-filed arguments [following T1914/12]. However, if a late-filed objection includes new allegations of fact, the board has under Article 114(2) EPC the discretion not to admit it into the proceedings.” (note, this is the headnote, the actual text of the decision does not state so literally).
• The Board finds that the late-filed objection  “included a new allegation of fact”. The Board adds that a "fact" in the sense of Article 114(2) EPC has to be understood as “a piece of (allegedly) factual information, on which a party based its case”
• As a comment, I'm not sure whether "allegedly" here should perhaps qualify "information" rather than "factual".
• Board then holds the objection at issues inadmissible because it “included a new allegation of fact”. 
• As a comment, perhaps the Board could also have said that the new allegation of fact is inadmissible and that the objection based on that fact hence fails on the merits. 
• The Board finds that the opponent's assertion that “the skilled person would have interpreted the term "poly"-olefin" in [the application as filed] as to directly and unambiguously meaning "poly-alphaolefin"”, to be an ‘allegation of a fact’.
• I expect that question of whether or not assertions about how the skilled person interprets a text (application as filed, prior art document) are factual assertions, will be of great impact for the appeal framework generally.
• The attack at issue was an Art.100(c) attack. Hence, also added subject-matter objections can involve factual assertions, according to this Board.

EPO T 1875/15 -  link

Admittance of the new objection under Article 100(c) EPC

2. During the oral proceedings before the board, the respondent raised an objection under Article 100(c) EPC based on the feature "polyolefin having a kinematic viscosity from 3 to 20 cSt at 100°C" mentioned among the fluidizing agents required by claim 1 as granted (II, supra). This feature was not, the respondent argued, disclosed in the application as filed. It referred to page 45, lines 14 to 31, and to page 38, lines 20 to 21, of the application as filed and put forward that this passage did not provide a valid basis for this feature of claim 1. The respondent's objection rested on the allegation that the term "poly"-olefin" used in line 16 of page 45 of the application as filed together with the feature of having a kinematic viscosity from about 3 to about 20 cSt at 100°C would have been interpreted by the skilled person as "poly-alphaolefin". Thus the cited passage actually disclosed a poly-alphaolefin having a kinematic viscosity from 3 to 20 cSt at 100°C. Hence, it would not be a basis for the feature of a polyolefin having a kinematic viscosity from 3 to 20 cSt at 100°C included in claim 1 as granted.

2.1 Up to the oral proceedings, said feature had never been objected to under Article 100(c) EPC. It had in particular never been in dispute that "poly"-olefin" in line 16 of page 45 of the application as filed meant "poly-olefin" and it had never been argued that it actually had to be read as "poly-alphaolefin". As not disputed by the respondent, its objection thus amounted to a new objection under Article 100(c) EPC.

The respondent requested that this new objection be admitted into the proceedings. It brought forward (X, supra) that this new objection was a new argument. As such, no discretion was available to the board under Article 114(2) EPC for not admitting it.

As set out above, the new objection was raised for the first time during the oral proceedings. It is thus late-filed. According to Article 114(2) EPC, the European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

2.2 The board acknowledged that in view of Article 114(2) EPC, it had in principle no discretion for not admitting late-filed arguments. This was also the conclusion reached e.g. in T 1914/12 (reasons, 7.2.3).

2.3 However, the respondent's objection included not only legal but also factual considerations.

2.3.1 The legal consideration underlying the objection was the following:

Article 100(c) EPC prejudices the maintenance of the patent as granted if the objected feature of granted claim 1 is not directly and unambiguously disclosed in the newly cited passage nor in the rest of the application as filed. The direct and unambiguous disclosure has to be judged with the eyes of the skilled person and their common general knowledge available at the priority date of the opposed patent.

2.3.2 The factual (and technical) consideration was the following:

What was the skilled person's common general knowledge at the priority date of the contested patent? How would the skilled person apply it to interpret the newly cited passage of the application as filed and what would be the result of this interpretation?

In the case in question, the factual and technical consideration was what the term "poly"-olefin" in line 16 of page 45 of the application as filed meant, and the result of this consideration was that it either had to be read as "polyolefin" or "poly-alphaolefin".

2.4 The respondent's allegation that the latter was true, such that the corresponding feature in claim 1 as granted was not based on the application as filed, was not an argument but rather an allegation of a fact, namely, the fact that the skilled person would have interpreted the term "poly"-olefin" in line 16 of page 45 of the application as filed as to directly and unambiguously meaning "poly-alphaolefin".

Therefore, the respondent's late-filed objection included a new allegation of fact. Thus, the board had under Article 114(2) EPC the discretion not to admit the respondent's late-filed objection.

2.5 This finding was in agreement with T 1914/12 (reasons, 7.1.4). As set out in that decision, a "fact" had to be understood as a piece of (allegedly) factual information, on which a party based its case.

The board's view in the present case was also in line with decisions T 0635/14 (reasons 3.1 to 3.3) and T 1381/15 (reasons 3), where the entrusted boards also regarded late-filed objections as new allegations of facts.

2.6 As the board had the discretion to admit or reject the respondent's late-filed objection, it had to decide how to exercise this discretion. In doing so, it had to take the Rules of Procedure of the Board of Appeal (RPBA 2007) into account. The late-filed objection was brought forward by the respondent during oral proceedings before the board, i.e. at the latest possible stage of the appeal proceedings. It thus represented an amendment of the respondent's case to be dealt with pursuant to Article 13(1) and (3) RPBA 2007.

Under Article 13(1) RPBA 2007, the board exercises its discretion in view of, inter alia, the complexity of the new subject-matter submitted, the state of the proceedings and the need for procedural economy.

Under Article 13(3) RPBA 2007, new allegation of facts submitted at oral proceedings shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

[...]

2.9 This completely new assessment of compliance with the issue of added matter at the oral proceedings would also have been contrary to procedural economy. Moreover, the appellant (and the board) could not reasonably have been expected to deal with it without adjournment of the oral proceedings.

2.10 In exercising its discretion under Article 114(2) EPC and with due regard to Article 13(1) and (3) RPBA 2007, the board thus decided not to admit the late-filed objection under Article 100(c) EPC raised by the respondent at the oral proceedings.