T 1506/11 - Inadmissible poisonous priority attack

T 1506/11 - link

Key points

• The Board holds a poisonous priority attack inadmissible as late file.
  " The legal and factual basis for a novelty objection under Article 54(3) EPC based on divisional applications in cases of invalid priority claims has existed since the beginning of the opposition filed []. Even if the appellant was reminded of such a possibility when decision T 1496/11 became available to the public [], no legitimate reason was provided for waiting at least an additional two and a half years until 12 August 2015 to raise such a complex objection for the first time at such a late stage of the proceedings.
• Therefore, the board uses its discretion under Article 13(1) RPBA not to admit the [] argument based on a lack of priority [] of the claimed subject-matter rendering it subject to a novelty objection under Article 54(3) EPC based on the divisional applications L18a and L18b."
  
• By the way, a very interesting (anonymous) amicus curiae was submitted in G 1/15, wherein it is in particular noted that Article 4H Paris Convention states, in the authentic language, "La priorité ne peut être refusée pour le motif que certains éléments de l’invention pour lesquels on revendique la priorité ne figurent pas parmi les revendications formulées dans la demande au pays d’origine" - suggesting that éléments is intended to mean "features" rather than embodiments.

Summary of Facts and Submissions


[...] VIII. The arguments of the appellant in the written and oral proceedings can be summarised as follows: [...]

Decision T 1496/11 which became available to the public at the end of the year 2012, made the appellant aware of the possibility of novelty objections under Article 54(3) EPC based on divisional applications in cases of invalid priority claims. The appellant thus could not have been reasonably expected to file such arguments earlier than with the letter of 12 August 2015. Therefore, the argument based on a lack of priority (translations L19a to L19c) of the claimed subject-matter rendering it subject to a novelty objection under Article 54(3) EPC based on the divisional applications L18a and L18b should be admitted into the proceedings.

Reasons for the Decision

[...]

6. Priority

The legal and factual basis for a novelty objection under Article 54(3) EPC based on divisional applications in cases of invalid priority claims has existed since the beginning of the opposition filed by fax of 2 October 2008 (divisional L18a published 7 March 2007 and divisional L18b published 23 January 2008). Even if the appellant was reminded of such a possibility when decision T 1496/11 became available to the public (which according to the appellant was at the end of the year 2012), no legitimate reason was provided for waiting at least an additional two and a half years until 12 August 2015 to raise such a complex objection for the first time at such a late stage of the proceedings.

Therefore, the board uses its discretion under Article 13(1) RPBA not to admit the late filed documents L18a, L18b and L19a to L19c and corresponding argument based on a lack of priority (translations L19a to L19c) of the claimed subject-matter rendering it subject to a novelty objection under Article 54(3) EPC based on the divisional applications L18a and L18b.

7. In summary, none of the arguments which were provided on behalf of the appellant demonstrate a lack of novelty or a lack of inventive step for the subject-matter of claim 1 (Articles 54 and 56 EPC 1973) and no other or further arguments were presented during the oral proceedings before the board.

The positive findings of the board on novelty and inventive step for claim 1 also apply to dependent claim 14 (see point 1.21.2 above).