T 2202/21 - Admissibility, required substantiation for inventive step (and Habermas)

Key points

•  " The present auxiliary requests were submitted only with the written reply to the statement of grounds of appeal. Thus, they constitute an "amendment" which may be admitted only at the discretion of the board (cf. Article 12(4) RPBA)."
• The substantiation was that the amendments corresponded to claims as granted and that "None of the prior art addresses [the added features]."
• "The respondent's [proprietor's] case presented in its written reply with respect to the newly filed auxiliary requests is based on the presence of additional limitations which were never addressed by the opposition division, as can be seen from the annex to the summons, the minutes of the first-instance oral proceedings and the decision under appeal. The respondent merely asserted that "none of the prior art" - presumably the prior art cited in the opposition proceedings - addressed those additional limitations. It argued that, since the absence of features cannot be proved, this reasoning should suffice. And, at any rate, filing these claim requests before the opposition division would not have made any difference, because the opposition division's preliminary opinion had consistently been in favour of the rejection of the opposition."
• "The board explained its position in regard of insufficiently substantiated claim requests. Namely that the requirement of presenting a complete case stipulated by Article 12(3) and 12(4), third sentence, RPBA is not merely a rule of administrative convenience, but the expression of a fundamental principle of  court proceedings (see T 108/20, Reasons 4.1, addressing procedural justice in discourse-based court proceedings)." (citing Habermas, see below) (Mr. Heath is common to both panels, indeed).
• The Board makes two highly relevant practical points

No need for auxiliary requests before OD if the patent is maintained as granted

• " The board tends to agree with the respondent that a filing of auxiliary requests in opposition proceedings was not necessarily called for, as these requests would not have been dealt with during the first-instance oral proceedings or in the decision given that the patent was maintained as granted. "
• This seems to me to be established case law; see, e.g., T 3240/19, T1758/21, and T0141/20.

Substantiation claim amendments inventive step

• With the opponent's appeal, new arguments were put on the table, thus calling for counter-arguments by the respondent. Counter-arguments can also consist of the filing of new claim requests where these are accompanied by corresponding arguments addressing why the alleged shortcomings of the main request would be overcome by the newly filed claim requests (cf. Article 12(3) RPBA)."
•  "Where, as in the case at issue, lack of inventive step is argued, the patentee in filing new requests has not only to explain the further differences to prior art, but also why these differences are considered inventive (e.g. by applying the problem-solution approach, by arguing synergy between the additional features, etc.). It is not the task of the opponent to make the proprietor's case of inventive step in order to provide arguments against a case of (the presence of) inventive step that has not even been made, and neither is it the task of the board. "
• The proprietor's reasoning that there were even more "distinguishing features" may provide a complete case for novelty, because novelty requires no more than one distinguishing feature. But novelty was never a ground for opposition in these proceedings. Absent any explanations as to inventive step, the discourse thus cannot move forward because no argument in that regard has been provided. Consequently, no counter-argument can be expected and the board, as the deciding body, cannot be expected to deal with this issue. The board is therefore within its discretion not to admit the insufficiently substantiated auxiliary requests, and in the case at hand decided just so.
• The Board does not explain what additional substantiation should have been given. T 1220/21 recently reviewed the matter and found that "According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5)"
• In view of G 2/21 r. 26, "According to the established case law of the boards of appeal [...] it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved." This may imply that the proprietor also has a duty to plead the advantages, i.e. to identify a technical effect of the amended feature (and make a prima facie case for it). 
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• T 108/20, Reasons 4.1, in translation: 4.1 Precisely because the judicial determination of justice is not accessible to absolute truth, it must draw its legitimacy from the proceedings aimed at this (Niklas Luhmann, Legitimation durch Verfahren, 6th edition Frankfurt 2001). Unlike scientific knowledge, there is no result in legal knowledge that can be proven to be correct. This applies all the more in a contentious procedure in which the facts relevant to the decision are determined by the parties' submissions. Justice can therefore only be defined through procedural justice, namely through the discourse aimed at finding justice: speech and counter-speech. Unlike the "domination-free" discourse postulated by Habermas and Alexy (Jürgen Habermas, Faktizität und Geltung. Beiträge zur Diskurstheorie des Rechts und des demokratischen Rechtsstaats, Frankfurt am Main, 1992; Robert Alexy, Theorie der juristischen Argumentation. 3. Aufl. Frankfurt, 1996), however, the discourse in court is not aimed at establishing a consensus between those involved about a result, but rather at enabling the court to make a decision as a result of this discourse. Due to the discursive nature of the procedure - speech and counter-speech - it follows that a party can only be expected to express itself if a statement has been made on its submission, be it by the Office, the Board or by the other party. It seems irrelevant at what point in time this occurs as far as it can be seen that the argument is still being maintained. This is important in the present case.
• The point of T 108/20 was that the appellant/opponent had referred, in its statement of grounds, to its objections against AR-3 as submitted before the OD; the OD had maintained the patent as granted. The Board found this to be sufficient substantiation (the Board also found AR-3 to be allowable). 
  
  
• To avoid any misunderstanding, I appreciate legal philosophy as the foundation of legal systems and as a framework for procedural justice. I also appreciate Boards not hiding their legal thinking. However, the decisions also illustrate doing this on a European level (i.e., avoiding too much focus on German legal literature) in patent procedures (patent attorneys are, typically, not lawyers). 

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t212202eu1

2.2 Admittance into the appeal proceedings (Article 12 RPBA)

2.2.1 The present auxiliary requests were submitted only with the written reply to the statement of grounds of appeal. Thus, they constitute an "amendment" which may be admitted only at the discretion of the board (cf. Article 12(4) RPBA).

2.2.2 According to the respondent's written reply to the appeal (cf. pages 10 and 11), claim 1 of the present auxiliary requests is based on granted (system) claim 4 (auxiliary requests 1 and 2) and granted (system) claim 5 (auxiliary request 2), which correspond to method claims 11 and 12 as granted, respectively. The respondent further submitted that:

"None of the prior art addresses a choice of subscription and/or a confirmation of validation of the user account." [section "Auxiliary Request #1"]

"None of the prior art addresses using a central (trusted) server to request content that is then that is then [sic] connected directly to the user equipment device." [section "Auxiliary Request #2"]

2.2.3 The respondent's case presented in its written reply with respect to the newly filed auxiliary requests is based on the presence of additional limitations which were never addressed by the opposition division, as can be seen from the annex to the summons, the minutes of the first-instance oral proceedings and the decision under appeal. The respondent merely asserted that "none of the prior art" - presumably the prior art cited in the opposition proceedings - addressed those additional limitations. It argued that, since the absence of features cannot be proved, this reasoning should suffice. And, at any rate, filing these claim requests before the opposition division would not have made any difference, because the opposition division's preliminary opinion had consistently been in favour of the rejection of the opposition.

2.2.4 The appellant objected that the auxiliary requests could and should have been filed already during the opposition proceedings. This would have given the appellant the possibility to react much earlier. Providing reasons during the oral proceedings before the board could hardly cure the fault in the written reply to the appeal. For this would force the appellant to build its case at a very late stage.

2.2.5 During the oral proceedings before the board, the board explained its position in regard of insufficiently substantiated claim requests. Namely that the requirement of presenting a complete case stipulated by Article 12(3) and 12(4), third sentence, RPBA is not merely a rule of administrative convenience, but the expression of a fundamental principle of court proceedings (see T 108/20, Reasons 4.1, addressing procedural justice in discourse-based court proceedings).

2.2.6 Applied to this case, the board tends to agree with the respondent that a filing of auxiliary requests in opposition proceedings was not necessarily called for, as these requests would not have been dealt with during the first-instance oral proceedings or in the decision given that the patent was maintained as granted. With the opponent's appeal, new arguments were put on the table, thus calling for counter-arguments by the respondent. Counter-arguments can also consist of the filing of new claim requests where these are accompanied by corresponding arguments addressing why the alleged shortcomings of the main request would be overcome by the newly filed claim requests (cf. Article 12(3) RPBA). Where, as in the case at issue, lack of inventive step is argued, the patentee in filing new requests has not only to explain the further differences to prior art, but also why these differences are considered inventive (e.g. by applying the problem-solution approach, by arguing synergy between the additional features, etc.). It is not the task of the opponent to make the proprietor's case of inventive step in order to provide arguments against a case of (the presence of) inventive step that has not even been made, and neither is it the task of the board. The proprietor's reasoning that there were even more "distinguishing features" may provide a complete case for novelty, because novelty requires no more than one distinguishing feature. But novelty was never a ground for opposition in these proceedings. Absent any explanations as to inventive step, the discourse thus cannot move forward because no argument in that regard has been provided. Consequently, no counter-argument can be expected and the board, as the deciding body, cannot be expected to deal with this issue. The board is therefore within its discretion not to admit the insufficiently substantiated auxiliary requests, and in the case at hand decided just so.

2.2.7 Besides, the new sets of claims constitute "fresh cases" whose admittance would necessitate an entirely new assessment by the board in regard of compliance with at least Article 52(1) EPC or even a remittal to the opposition division for further prosecution which would in turn be clearly detrimental to procedural economy.

2.3 Consequently, the board did not admit the present auxiliary requests into the appeal proceedings.

3. Since there is no allowable claim request on file, the patent must be revoked.