T 1472/22 - Newly asserting a public prior use in appeal

Key points

• This decision was issued already in January 2025, but it still a remarkable one.
• The opponent included a new public prior use attack with the Statement of grounds.
• The Board admits it. Chiefly because it is based on a public prior use that the proprietor had submitted in another opposition case, where he was the opponent (and the opponent was the proprietor). Still, there was some delay as the public prior use was known to the opponent since 2019 and filed in the appeal only in 2022.
• The following remark is of general interest: (in translation) " the Board does not share the patent proprietor's view that the prior use should have been raised before the Opposition Division. The opponent's statement of grounds of appeal is directed against the maintained version of the patent, which is based on auxiliary request 3, which was only filed during the oral proceedings before the Opposition Division. Any findings made by the Opposition Division in the [preliminary opinion of the OD], for example, in paragraph 8.4 regarding the disclosure of document D4 (referred to therein as E4), are irrelevant in the present case for the admission of this prior use, since no auxiliary requests had yet been filed at the time of the summons; see paragraphs 3.4 and 3.5 of the statement of facts in the contested decision. Furthermore, there was no reason for the opponent to submit the prior use before the oral proceedings, since the [preliminary opinion of the OD] already considered documents E2 (D2 in the appeal proceedings) and E3 to be novelty-destroying for the granted version of the patent, see paragraphs 8.2 and 8.3 thereof (for the comparable situation of auxiliary requests, which could theoretically have been filed in their own right, see T 0141/20, guiding principle and point 5.4 of the Reasons)."
• This reasoning makes sense. But I don't know if all boards see it this way. 
• "pursuant to Article 12(4) RPBA, it is within the board's discretion whether to admit the new submission. According to the non-exhaustive list of criteria in Article 12(4), fifth sentence, RPBA, the board will consider, for example, the complexity of the amendment or the need for procedural economy when exercising its discretion. In the present case, document D12, originating from the patent proprietor, with technical drawing D7b on the second page of the document, contains a scaled technical drawing of the lock [..]; see also the patent proprietor's submissions on pages 13 and 14 of D13. In the board's view, D12 is therefore easily understandable, particularly for the patent proprietor. Furthermore, the document enables an analysis of the movements of the rotary latch and pawl when opening the lock if these components are transferred into a CAD program, for example, as in D15, and rotated around their pivot points. This allows for the derivation of force action lines for the contact force as well as the respective lever arms of the contact force relative to the pivot points of the rotary latch and pawl. Even with a certain inaccuracy in the transfer to a CAD program, this allows at least qualitative statements to be made regarding the torque that the rotary latch imparts to the pawl. Therefore, in the Board's view, document D12 concerns a feature that is essential to the outcome of the appeal proceedings."
• "The Board notes that, in the case law of the Boards of Appeal, new prior use that is only raised during the appeal proceedings is generally not admitted. However, the reason for this is, in most cases, that the prior use originates from the opponent's environment, making it practically impossible for the patent proprietor to independently examine the facts relied upon. In the present case, the Board therefore considers it an exceptional circumstance that the prior use not only originates from the patent proprietor, but that the patent proprietor itself submitted the relevant facts, even during the proceedings before the EPO. This eliminates the difficulty of assessing the evidence on the part of the patent proprietor. Nor can it invoke ignorance of unexpected facts."
• "The board concludes from all of the above that the lock disclosed in prior use D12 has all the features of claim 1 of auxiliary request 3, so that its subject-matter lacks novelty, Article 54 EPC. "
• The patent is revoked.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t221472du1