T 1042/18 - Art. 12 and 13 RPBA and G10/91

Key points

• In the present case, the opponent argues that their new attack complies with G 10/91 hn.2 and G 7/95, i.e. that it is not a fresh ground of opposition and hence is admissible (the English version of G 10/91 is G 9/91).
• The Board finds that Art. 12 and 13 RPBA and G 10/91 exist cumulatively and independently of each other.
• The new attack at issue is presented for the first time during the oral proceedings before the Board, but I think the general question pertains to submissions at any stage of the appeal proceedings.
• The Board in translation: " In appeal proceedings, new submissions are restricted not only by the case law of the Enlarged Boards of Appeal in G 10/91, G 1/95 and G 7/95 regarding new grounds for opposition, but also by the possibility, given to the boards in Article 114(2) EPC and the Rules of Procedure not to admit late submissions. These restrictions are independent and cumulative." 
• As a question, is hn.3 G 10/91 based on Art. 114, or on some other article of the EPC (or not at all on an article of the EPC0? If hn.3 of G 10/91 is based on Art. 114 EPC as well, does that mean that there are two complexes of case law based on the same provision and both dealing with the admissibility of new attacks?
• To cite G 9/91, r.18: " Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage." 
• The present Board: " The provisions of the RPBA 2020 on late filing elaborate Article 114(2) EPC in a way that is fundamentally binding for the boards (Article 23 RPBA 2020). This also includes the determination of procedural stages in the complaints procedure, during which the delay rules are to be applied with varying degrees of severity." 
• The new inventive step attack is not admitted. The inventive step attack was based on the same documents cited previously as novelty-destroying, which would be enough under G 9/91 as held in G 1/95 r.7.2
• The Board is of the view that at least the OD's decision to reject the opposition, enabled the opponent to present the inventive step attack with the Statement of grounds.
• " In the appeal proceedings, there is already a first-instance decision which, from the point of view of the opponent, was usually made taking into account the counter-arguments of the patent proprietor. At this stage of the proceedings at the latest, it is therefore regularly possible - and also usual - as an opponent to first argue that the disclosure content of a certain document is novelty-damaging and then, in the event that the Board of Appeal should come to a different view in this regard, supplementary arguments on the basis of the same document claiming lack of inventive step. That this is possible and customary is also shown in the present case by the behavior of the appellant itself, who raised both novelty objections and objections of lack of inventive step in the grounds of appeal based on documents D1, D7, D9 and D12. The fact that the appellant, based on documents D4 and D5 and fully aware of the decision under appeal - in which these documents were not considered to be novelty-damaging - only raised novelty objections in the statement of grounds of appeal cannot be to its advantage." 

EPO T 1042/18 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t181042du1.html

Translation

4. Admission of objections of lack of inventive step based on D4 or D5 and request for referral to the Enlarged Board of Appeal

4.1 The appellant claimed that the subject-matter of claim 1 was not inventive based on either document D4 or D5. These objections were raised by the appellant for the first time during oral proceedings before the Board of Appeal. The Respondent requested that these objections be dismissed under Article 13(2) RPBA 2020.

4.2 Pursuant to Article 13(2) RPBA, changes to a party's appeal submissions after the notice of summons to oral proceedings has been served must generally not be taken into account unless the party concerned has provided valid reasons for the existence of exceptional circumstances.

4.3 The appellant stated that it had raised novelty objections on the basis of D4 and D5, which is why it could also raise inventive step objections on the basis of these documents at a later point in time without being restricted by Article 13(2) RPBA 2020. In this context, she referred to the case law of the Boards of Appeal of the EPO, IV.C.3.4.2 and in particular to the decisions T 597/07, T 131/01 and T 635/06 cited therein.

4.4 The decisions cited by the appellant concern the consideration of new grounds for opposition submitted after the opposition period according to the decisions of the Enlarged Board of Appeal G 10/91 G 1/95 and G 7/95.

4.5 In the appeal proceedings, new submissions are restricted not only by the case law of the Enlarged Boards of Appeal in G 10/91, G 1/95 and G 7/95 on the consideration of new grounds for opposition, but also by the boards in Article 114(2) EPC and the possibility under the Rules of Procedure of the Boards of Appeal not to admit late submissions. These restrictions are independent and cumulative.

4.6 In the present case, both the ground for opposition of lack of novelty and the ground of opposition of lack of inventive step were asserted and substantiated in the notice of opposition. The objection of lack of inventive step raised for the first time during the oral proceedings before the Board of Appeal based on documents D4 or D5 therefore does not constitute a new ground for opposition within the meaning of the case law of the Enlarged Board of Appeal. EPC and the provisions of the RPBK 2020.

4.7 The provisions of the RPBA 2020 on late filing elaborate Article 114(2) EPC in a way that is fundamentally binding for the boards (Article 23 RPBA 2020). This also includes the determination of procedural stages in the complaints procedure, during which the delay rules are to be applied with varying degrees of severity.

4.8 The link between the case law of the Enlarged Board of Appeal in G 10/91, G 1/95 and G 7/95 on the examination of new grounds for opposition is the question of whether there is a new ground for opposition. The starting point in Article 13 (2) RPBA, on the other hand, is the question of whether the complaint has been amended. These connecting points are not congruent. While a new ground for opposition put forward for the first time after the oral hearing before the Board of Appeal has been served regularly also constitutes a change in the grounds of appeal within the meaning of Article 13(2) RPBA 2020, conversely, a change in the grounds of appeal does not in any way presuppose that this must consist in the submission of a new ground for opposition. For this reason alone, the complainant's arguments [ dass der Einwand mangelnder erfinderischer Tätigkeit ausgehend von einem der Dokumente D4 oder D5 keinen neuen Einspruchsgrund darstelle, lauft ins Leere].

4.9 Submissions that are not directed to the requests, facts, objections, arguments and evidence contained in the statement of grounds of appeal or reply result in a modification of the appeal submission within the meaning of Article 13(2) RPBA (J 14/19, point 1.4 of the reasons). ). In this context, both a new combination of factual elements (e.g. the choice of a different citation or a different text passage of a citation as a starting point for an inventive step objection) and a new combination of factual and legal elements (e.g. the reference to a document or a passage in a different legal context) constitutes a change in the complaint's submissions (see J 14/19, point 1.8 of the Reasons).

4.10 According to the appellant, the objection of lack of inventive step based on one of the documents D4 or D5 should be considered in the appeal proceedings because the appellant had previously raised novelty objections based on these documents. In its view, this constitutes exceptional circumstances pursuant to Article 13(2) RPBA 2020. For more detailed justification, the appellant referred in particular to the reasoning of the boards in decisions T 131/01 and T 597/07. However, as explained above, these decisions concerned a different issue, namely whether there was a new ground for opposition within the meaning of the case law of the Enlarged Board of Appeal.

4.11 Furthermore, the statements made in T 131/01, point 3.1 of the Reasons and T 597/07, point 5 of the Reasons are to be understood against the specific background of these cases and the legal situation at the time (see also T 1029/14, 4.4.2 of the Reasons, T 448/03, point 5.2 of the Reasons and T 184/17, point 4.8 of the Reasons). In particular, the Board believes that the statement that it is impossible to substantiate the ground for opposition of inventive step if a lack of novelty is also asserted on the basis of the same document cannot be transferred in this generality to the appeal procedure and the rules on delays pursuant to Article 13 RPBA 2020 .

4.12 In the appeal proceedings, there is already a first-instance decision which, from the point of view of the opponent, was usually made taking into account the counter-arguments of the patent proprietor. At this stage of the proceedings at the latest, it is therefore regularly possible - and also usual - as an opponent to first argue that the disclosure content of a certain document is novelty-damaging and then, in the event that the Board of Appeal should come to a different view in this regard, supplementary arguments on the basis of the same document claiming lack of inventive step.

4.13 That this is possible and customary is also shown in the present case by the behavior of the appellant itself, who raised both novelty objections and objections of lack of inventive step in the grounds of appeal based on documents D1, D7, D9 and D12. The fact that the appellant, based on documents D4 and D5 and fully aware of the decision under appeal - in which these documents were not considered to be novelty-damaging - only raised novelty objections in the statement of grounds of appeal cannot be to its advantage.

4.14 As a result, the complainant did not show any valid reasons for the existence of extraordinary circumstances within the meaning of Article 13 (2) RPBA 2020, which would result in such a late change in her complaint submissions - which, contrary to the requirement of procedural economy, would also involve a fundamental change in the topics to be discussed would have been - could justify.

Therefore, the board decided not to consider the new objections of lack of inventive step based on D4 or D5 in the appeal proceedings.

4.15 In connection with the admission of its objection of lack of inventive step, the Respondent also requested that questions to clarify the legal position be submitted to the Enlarged Board of Appeal. In particular, such clarification is necessary because the application of Article 13 (2) RPBA 2020 must not be contrary to established case law and because the Chamber has ruled against this case law.

4.16 Whether a board refers the matter to the Enlarged Board of Appeal under Article 112(1)(a) EPC is at the discretion of the board (see Case Law of the Boards of Appeal, 9th edition 2019, VB2.3.2).

4.17 As explained above, the case law to which the appellant referred does not concern the application of Article 13 (2) RPBA 2020, but the examination of new grounds for opposition and thus a completely different constellation. Furthermore, the Board of Appeal was able to answer the legal questions relevant to the case at hand without any doubt (see points 4.4 - 4.13 above). Consequently, the board rejected the request for questions to the Enlarged Board of Appeal.