T 3024/19 - New attacks in appeal

Key points

• This is a rather straightforward opposition appeal case, except that it is (still) one of the first published decisions to apply the new 'first level of convergence' of the RPBA 2020. 
• The statement of grounds of the opponent contained new objections. The statement of grounds was filed 26.02.2020 so Art. 12 RPBA 2020 applies in its entirety.
• " The objections raised in items 4, 5.3 to 5.7, 6.1 and 6.2 in the statement setting out the grounds of appeal are not directed to facts, objections, arguments and evidence on which the decision under appeal was based, as required by Article Article 12(2) RPBA 2020. Moreover, it has neither been submitted nor demonstrated that these objections were admissibly raised and maintained in the proceedings before the opposition division. The new objections in appeal thus constitute amendments of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, which may be admitted only at the discretion of the Board, whereby reasons should be provided for submitting the amendments in appeal (Article 12(4) 2020, second paragraph)." 
• " The appellant [opponent] argued in the statement setting out the grounds of appeal (section 1) that it had been impossible for them to react appropriately to the filing of the first auxiliary request in opposition (now the main request) since that request had not been filed until the day before the date set under Rule 116(1) EPC."
• " The Board observes that the request was filed on 18 July 2019 and thus two months in advance of the oral proceedings, which took place before the opposition division on 19 September 2019."
• As a comment, it is not clear to me if this means that the opponent should have filed a letter after the Rule 116 date before the OD. Point 1.4.3. of the decision suggest that the attacks should have been presented during the oral proceedings. 
• " Further, as indicated below, the amendments were either taken from granted claims, rather than from the description (see point 1.4.1), or the possibility of raising the objections newly raised in appeal was apparently specifically addressed already during the oral proceedings before the opposition division (see point 1.4.2). Thus, the Board finds that the appellant had reasons to raise those objections already during opposition proceedings." 
• " It is apparent that the objections of lack of sufficiency of disclosure raised by the appellant [] concern features and combination of features that were already present in the granted claims." 
• " Under these circumstances the new objections of lack of sufficiency of disclosure raised in appeal could have been raised before the opposition division in view of the corresponding granted claims. In view of that[,] the date at which the first auxiliary request was filed in the first instance proceedings does not justify the filing of these objections for the first time in the appeal procedure." 
• So it is important to attack all claims as granted and perhaps their combinations as well, already before the OD.
• " As to the other objections raised in appeal[]  it is apparent that at the oral proceedings before the opposition division the opponent did not object to the then first auxiliary request (present main request) under Rule 80 or Article 84 EPC [] and did not maintain their novelty objection against claim 1 of the first auxiliary request over document D10 []  while having the possibility to do so." 
• "The Board therefore does not see any reason why it was not possible for the appellant to raise the objections at the beginning of the opposition proceedings or at the latest at the oral proceedings before the opposition division."
• As a  comment, the new objections could also have been held inadmissible under Art.12(6)(s.2), as it seems that the Board in effect concludes that the new objections should have been filed before the OD (though the Board does not say so).
As a further comment, I'm surprised that the Board does not expressly apply the factors specified in the Art.12(4)(s.5): " The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." [roman numerals added]. The fifth sentence uses "shall", not "may" .
• "  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 objections" 
• 
  

EPO 

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/t193024eu1.html

Reasons for the Decision

1. Admittance of new objections in appeal

1.1 The statement setting out the grounds of appeal contained among others the following objections relating to the main request in appeal:

(a) An objection based on Rule 80 EPC and Article 84 EPC against the modification performed in dependent claim 8 of the main request (section 4 of the statement setting out the grounds of appeal),

(b) An objection of lack of sufficiency of disclosure against claim 1 of the main request based on the definition of the range of viscosity at a constant shear stress of 747 Pa and the preparation of a composition having that property (sections 5.3 to 5.5 of the statement setting out the grounds of appeal),

(c) An objection of lack of sufficiency of disclosure against claims 11 to 13 of the main request with regard to the preparation of articles/pipes/pipes fittings for which the polyethylene composition meets the combination of shear thinning index and viscosity at a constant shear stress of 747 Pa and, for claims 12 and 13, also requirements on the critical pressure in a S4 rapid crack propagation resistance, the pressure resistance determined according to ISO 1167-1:2006 and the slow crack propagation resistance (section 5.6 of the statement setting out the grounds of appeal),

(d) An objection of lack of sufficiency of disclosure against claims 12 and 13 of the main request with regard to the preparation of a pipe/pipe fitting for which the patent in suit would not provide guidance as to the structural or compositional features of the polyethylene composition and the functional features of the article in order to meet the requirements set out in these claims (section 5.7 of the statement setting out the grounds of appeal),

(e) An objection of lack of novelty against claim 1 of the main request in view of document D10 or an objection of lack of sufficiency of disclosure if novelty is acknowledged (sections 5.5, 6.1 and 6.2 of the statement setting out the grounds of appeal).

1.2 These objections were not raised before the opposition division and were not part of the decision under appeal.

1.3 As the statement setting out the grounds of appeal was filed on 26 February 2020, Article 12, paragraphs 4 to 6 RPBA 2020 applies (see Article 25(1) and (2) RPBA 2020). The objections raised in items 4, 5.3 to 5.7, 6.1 and 6.2 in the statement setting out the grounds of appeal are not directed to facts, objections, arguments and evidence on which the decision under appeal was based, as required by Article Article 12(2) RPBA 2020. Moreover, it has neither been submitted nor demonstrated that these objections were admissibly raised and maintained in the proceedings before the opposition division. The new objections in appeal thus constitute amendments of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, which may be admitted only at the discretion of the Board, whereby reasons should be provided for submitting the amendments in appeal (Article 12(4) 2020, second paragraph).

1.4 The appellant argued in the statement setting out the grounds of appeal (section 1) that it had been impossible for them to react appropriately to the filing of the first auxiliary request in opposition (now the main request) since that request had not been filed until the day before the date set under Rule 116(1) EPC. The Board observes that the request was filed on 18 July 2019 and thus two months in advance of the oral proceedings, which took place before the opposition division on 19 September 2019. Further, as indicated below, the amendments were either taken from granted claims, rather than from the description (see point 1.4.1), or the possibility of raising the objections newly raised in appeal was apparently specifically addressed already during the oral proceedings before the opposition division (see point 1.4.2). Thus, the Board finds that the appellant had reasons to raise those objections already during opposition proceedings.

1.4.1 It is apparent that the objections of lack of sufficiency of disclosure raised by the appellant (objections indicated in point 1.1. as (b)-(d)) concern features and combination of features that were already present in the granted claims. Claim 1 of the main request corresponds to claim 5 as granted, namely claim 1 as granted in which the polyethylene composition is additionally defined by its viscosity at a constant shear stress of 747 Pa. Also, the pipes/pipe fittings of granted claims 12-14 (corresponding to claims 11-13 of the present main request) refer to any of the preceding claims and therefore encompass the combination of shear thinning index, viscosity at a constant shear stress of 747 P and for claims 13 and 14 the critical pressure in a S4 rapid crack propagation resistance, the pressure resistance determined according to ISO 1167-1:2006 and the slow crack propagation resistance as well. Under these circumstances the new objections of lack of sufficiency of disclosure raised in appeal could have been raised before the opposition division in view of the corresponding granted claims. In view of that the date at which the first auxiliary request was filed in the first instance proceedings does not justify the filing of these objections for the first time in the appeal procedure.

1.4.2 As to the other objections raised in appeal (objections indicated in point 1.1. as (a) and (e)), it is apparent that at the oral proceedings before the opposition division the opponent did not object to the then first auxiliary request (present main request) under Rule 80 or Article 84 EPC (corresponding to objection (a) above, see minutes points 6.1 and 6.3 and decision points 4 and 6) and did not maintain their novelty objection against claim 1 of the first auxiliary request over document D10 (corresponding to objection (e) above, see minutes point 6.5 and decision point 8), while having the possibility to do so.

1.4.3 The Board therefore does not see any reason why it was not possible for the appellant to raise the objections at the beginning of the opposition proceedings or at the latest at the oral proceedings before the opposition division.

1.5 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 objections raised in sections 4, 5.3 to 5.7, 6.1 and 6.2 of the statement setting out the grounds of appeal.

2. Admittance of D12 to D14, D20 to D23

2.1 Documents D12, D13, D14, D21 and D22 were firstly filed with the statement of ground of appeal and cited in support of the objection of lack of novelty of claim 1 of the main request in view of D10 (section 6.2 of the statement setting out the grounds of appeal), an objection first submitted in appeal which - for the reasons indicated above - is not admitted into the proceedings by the Board. In that respect, there is no further justification provided by the appellant for the admittance of D12, D13, D14, D21 and D22 into the proceedings.

2.2 In view of that, 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 documents D12, D13, D14, D21 and D22.