T 0028/20 - (II) First level of convergence

 Key points

• The Board, applying new Art.12(4) RPBA 2020 (for the first time in a published decision in opposition as far as I know): "In its statement of grounds of appeal, the appellant [opponent] not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular [...]”
• “ an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.”
• “Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.”
• Note that the Board refers to Article 12(4) 2020, third sentence as 'stipulations' that are to be 'satisfied', not merely as factors to be taken into account when making the discretionary decision on admissibility.
• “In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objection of lack of inventive step starting from D4 as closest prior art.”
• As a comment, possibly the result would have been the same under Art.12(4) RPBA 2007 but the reasoning required under Art.12(4) RPBA 2007 would have been different in my view.

T 0028/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200028eu1.html

3. Inventive step

3.1 Objections raised

3.1.1 In its statement of grounds of appeal, the appellant not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular examples 4D-1 and 4D-2 thereof, in combination with common general knowledge or D9 (sections 6.18 to 6.20). The question of the admittance of that new objection was addressed in the Board's communication (section 7.5) and the respondent requested at the oral proceedings before the Board that said objection be not admitted.

3.1.2 In that respect, it was not contested by the appellant, in particular at the oral proceedings before the Board, that such an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.

Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.

In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objection of lack of inventive step starting from D4 as closest prior art.