Key points
- " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents.
- " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
- " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)."
- " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6."
- The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments."
- "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings."
- As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)").
- As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
- The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
4.1.12 The board's conclusion is thus that the subject-matter of claim 1 is not obvious to the skilled person starting from D1 as closest state of the art.
4.2 Starting from D6
4.2.1 The opponent had not presented any objections of lack of inventive step with D6 as closest state of the art during the first instance opposition procedure. The first time such objections were put forward was in the statement of the grounds of the present appeal.
4.2.2 The proprietor objected to the admission of these objections of the opponent. It argued that such an objection had never been discussed during the opposition procedure, despite the fact that the opponent had used D6 in other objections related to lack of novelty. Moreover, the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). The opponent had thus deliberately chosen not to present such an objection for the opposition division to decide upon, despite the fact that it had been given the explicit opportunity to do so. The objection should thus not be admitted into the appeal proceedings because it could and should have been presented during the opposition procedure.
4.2.3 The opponent did not present any arguments in relation to the proprietor's argument that it could and should have filed this objection during the first-instance opposition proceedings. Neither did it contest that it had agreed during these proceedings that D6 was not suitable as closest prior art. The opponent mainly argued that this new objection did not constitute any new fact but merely a new argument, which the board had no discretion not to admit into the appeal proceedings.
According to the proprietor, D6 had been discussed in detail during the first-instance opposition proceedings in the context of novelty and the proprietor was thus familiar with its content. The new objection of lack of inventive step starting from D6 did not, therefore, present any new subject-matter that the opponent was not aware of.
Making reference to decisions T 131/01, OJ EPO 2003, 115, (Reason 3.1, fifth paragraph and Reason 3.2, second paragraph) and T 2238/15 (Reason 4, first and second paragraphs), the opponent argued that, since D6 had previously been discussed in relation to lack of novelty, its objection of lack of inventive step with D6 as closest prior art did not constitute a new ground for opposition nor a new fact, but merely a new argument. The statement of the grounds of appeal was filed before the new version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force and the admission of this objection had to be judged under the older version, namely Article 12(4) RPBA 2007, which mentioned only facts, evidence and requests, but no arguments, which could have been presented in the first instance proceedings. The objections of lack of inventive step starting from D6 should thus be admitted.
4.2.4 According to Article 12(4) RPBA 2007, the Board has the power to hold inadmissible "facts, evidence, or requests" which could have been presented in the first instance proceedings.
Since the opponent did not contest that it could have presented the objection of lack of inventive step with D6 as starting point in the opposition proceedings, the only remaining question is whether these objections are to be considered new facts or new arguments. The board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments.
4.2.5 The board also agrees with the opponent that these objections do not constitute a new ground for opposition, since lack of inventive step was raised and substantiated from the beginning of the opposition procedure, albeit with different prior art documents as starting points.
4.2.6 In the decision T 131/01 there was question of whether the ground for opposition related to lack of inventive step had been properly substantiated. The opponent had presented in its notice of opposition a fully substantiated attack in relation to lack of novelty and a simple mention that should the claim be considered novel, then it would not have been inventive based on the same prior art document. In the passages cited by the opponent, the deciding board concluded that in a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty having regard to a prior art document and lack of inventive step having regard to the same prior art and the ground of lack of novelty has been substantiated pursuant to Rule 55(c) EPC, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee (see also Headnote). The board does not see how this aspect is relevant in the present context, since there has been no question that the ground for opposition related to lack of inventive step had been properly substantiated from the beginning of the opposition procedure.
In a different passage of the same decision (Reasons 4; not referred to by the opponent), the deciding board concluded that a late-filed objection of lack of inventive step based on a document previously used for an objection of lack of novelty did not constitute a new fact but only a new argument. The deciding board did not provide many details but only stated that "[a]s is apparent from the minutes of the oral proceedings, no new facts and evidence were submitted. Document DE was cited and analysed in the notice of opposition, so that its content does not constitute new facts" (see last lines in point 4.1 of the Reasons).
The present board notes that in the referred notice of opposition, there is also mention that claim 1 as granted was not inventive in view of document "DE" (see bottom of page 4) and that there were also other objections of lack of inventive step starting from this document against other claims (see e.g. pages 5 to 7).
Hence, it is not correct that no objection of lack of inventive step based on the specific document had been presented during the opposition procedure, contrary to the present case, where it is uncontested that no objection of lack of inventive step starting from D6 was presented during the opposition procedure.
4.2.7 In T 2238/15 there was discussion whether an objection of lack of inventive step starting from a document previously used only in objections related to lack of novelty and which was presented for the first time during the oral proceedings before the opposition division, was indeed late-filed and whether it constituted a new fact or a new argument.
The opponent in that case had argued lack of novelty of granted claim 1 based on document MB3 and lack of inventive step starting from document MB8. After the proprietor had filed an auxiliary request during the written procedure, the opponent presented an objection of lack of inventive step against claim 1 of the auxiliary request starting from MB3 in combination with MB8. During the oral proceedings, the opposition division considered this objection to be a late-filed fact and did not admit it into the proceedings because it considered that it was not prima facie relevant.
The deciding board first questioned whether this objection should be considered late-filed because it was submitted as a reaction to the proprietor's filing of auxiliary requests only one month before the oral proceedings. In fact, the board considered that it was not late-filed and that the opposition division had committed a substantial procedural violation by not admitting it.
The deciding board then went on to analyse the opponent's arguments regarding the content of MB3 and MB8 with respect to the claimed features considered important in the discussion and concluded that all the relevant aspects of these two documents in relation to the claimed features had been discussed among the parties so that the new objection based on MB3 in combination with MB8 was not to be considered a new fact, but rather a new argument. As Article 114(2) EPC made reference only to late-filed facts and evidence (but not arguments), the opposition division was not correct in not admitting this new argument into the opposition proceedings.
It is noted that T 2238/15 made reference to T 131/01, Reasons 4 as support for its conclusions.
The present board notes that, as in T 131/01, the deciding board in T 2238/15 did not conclude that a new objection based on documents already on file should always be considered a new argument and not a new fact. The deciding board referred to the discussions among the parties in the context of previous objections based on the same documents and concluded that all the relevant aspects had been discussed so that no new facts were presented. The present board reaches a different conclusion regarding the present case, as it notes that the opponent had always argued that D6 disclosed all the features of claim 1 as granted and no possible combined disclosure of those features in relation to any combination with other teachings had been put forward during the opposition procedure.
4.2.8 The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12).
The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent. In appeal, it presented a new objection based on the fact that D6 did not disclose feature [1.3](c). This is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6.
4.2.9 Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings.
4.3 The board's conclusion is hence that the subject-matter of claim 1 as granted is not obvious for the skilled person and therefore the ground for opposition of lack of inventive step does not prejudice the maintenance of the patent as granted (Articles 100(a), 52(1) and 56 EPC).
5. Since none of the grounds for opposition raised by the opponent prejudices the maintenance of the patent as granted, the appeal must fail.
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