T 2091/12 - Fresh grounds: novelty

Key points

• The opponent-appellant had raised a lack of novelty objection based on prior use for the first time in appeal. This is a fresh ground and is not admitted under G 7/95. Lack of inventive step based on the same prior use is not admitted, under article 13(3) RPBA, because opponent had argued it for the first time in his written submissions after the summons.

T 2091/12 - link

Reasons for the Decision

1. Fresh ground for opposition (lack of novelty)

1.1 According to the headnote of G 7/95, OJ EPO 1996, 649, "In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee".

1.2 In its statement of grounds of appeal the appellant raised for the first time in the present opposition-appeal proceedings a lack of novelty objection based on alleged prior uses and filed evidence therefor.

1.3 The respondent explicitly requested that the above-mentioned fresh ground for opposition not be introduced into the appeal proceedings.

1.4 Given that according to G 7/95, supra, the board has no power to examine the above-mentioned fresh ground for opposition without the patent proprietor's agreement, the board does not admit the appellant's lack of novelty objection into the appeal proceedings.

2. Admissibility of the appellant's lack of inventive step objection raised after oral proceedings had been arranged and based inter alia on alleged prior uses

2.1 According to Article 13(3) RPBA amendments sought to be made after oral proceedings have been arranged are not to be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

2.2 In the present case the appellant submitted with its letter dated 1 June 2016 (see point 3), i.e. after oral proceedings had been arranged, for the first time in the present opposition-appeal proceedings an objection as to lack of inventive step based inter alia on alleged prior uses.

2.3 As lack of inventive step had only been challenged up to that point of the appeal proceedings on the basis of the provided patent literature, the above-mentioned new objection based inter alia on alleged prior uses amounts to a complete change of the appellant's case.

2.4 This new inventive step attack raises complex issues requiring inter alia a discussion on whether the alleged prior uses based on documents E9-E11 and E19 can be regarded as substantiated and/or proven on the basis of the evidence submitted.

2.5 Due to the very late stage of the appeal proceedings at which this objection had been raised, it cannot be reasonably expected that the patent proprietor or the board can deal with the above-mentioned complex issues without adjournment of the oral proceedings.

2.6 For the above reasons the board does not admit the appellant's lack of inventive step objection based inter alia on alleged prior uses into the appeal proceedings in accordance with Article 13(3) RPBA.