T 0988/14 - Not waiting for the Board

Key points

• In this case, the opponents requested to present their arguments for inventive step during the oral proceedings before the Board, after a finding would have been announced on novelty of the claim over D5, the document also to be used as closest prior art. The proprietor had already defended  novelty of the claim over D5 with its Statement of response.
• The Board does not admit the inventive step attack, as being late filed. The Board does not assess prima facie relevance of the new argument.
• The Board: " The request of submitting a line of attack on inventive step starting from D5 and combining it with D6, not only constitutes a substantial amendment to the Opponent's case, which accordingly is only admissible at the Board's discretion pursuant to Article 13(1) RPBA, but also constitutes an unjustified belated response to the Patentee's arguments on novelty in respect of D5. In particular, it is not justified to wait for the Board to come to a conclusion on novelty, [] for amending the Opponent's case." 

T 0988/14 - link

Reasons for the Decision

8.1 The Opponent then requested that a new line of attack on inventive step be discussed, based on the combination of documents D5 and D6.

The Board, after having heard the respective arguments of the parties, in particular after discussion of the patent proprietor's objection not to admit the new line of attack because filed late, decided to exercise its discretionary power according to Article 13(1) RPBA (Rules of Procedure of the Boards of Appeal) not to admit the Opponent's new line of attack on inventive step against claim 1 of auxiliary request 5 based on D5 and D6.

8.2 It is firstly noted that auxiliary requests 4 and 5 were already submitted during opposition proceedings and D5 was already submitted with the notice of opposition. In opposition proceedings, however, the Opponent never relied on D5 to attack novelty of the claimed subject-matter, or as the starting point for an attack on inventive step. In fact, the objection of lack of novelty of claim 1 of auxiliary request 4 (this claim being, as stated above, identical to claim 1 of auxiliary request 5) over D5 was only submitted with the Opponent's statement of grounds of appeal. In its reply thereto, the Patentee submitted related arguments on novelty over D5. The Opponent, however, did not submit in response any arguments in writing, in case D5 would not be prejudicial to the novelty of the subject-matter of claim 1, but requested to submit its case on inventive step starting from D5, and combining it with D6, only during the oral proceedings, after the Chairman had ascertained that everything in respect of novelty and inventive step of claim 1 had been said and after the Board had come to a conclusion on novelty over D5. 

Under these circumstances, the request of submitting a line of attack on inventive step starting from D5 and combining it with D6, not only constitutes a substantial amendment to the Opponent's case, which accordingly is only admissible at the Board's discretion pursuant to Article 13(1) RPBA, but also constitutes an unjustified belated response to the Patentee's arguments on novelty in respect of D5. In particular, it is not justified to wait for the Board to come to a conclusion on novelty, based exclusively on the Patentee's arguments that were already presented in writing and thoroughly discussed, for amending the Opponent's case. This rather amounts in finding a belated way of tackling with the conclusion of the Board.

9. The Board also rejected the request of the Opponent of submitting a further new line of argument on inventive step based on D5 and common general knowledge. The reasons for not admitting the previous request (see above paragraph 8) also apply, mutatis mutandi, to this request. In addition, it is noted that this request was submitted after the Board had deliberated on, and decided not to admit, the new line of argument on inventive step based over D5 and D6. Accordingly, this request was filed at an even later stage than the previously filed request. The Board, seeing no justification for this piecemeal presentation of the Opponent's case during the oral proceedings, decided, having regard to the current state of the oral proceedings (close to its end), to exercise its discretion pursuant to Article 13(1) RPBA not to admit this request.

10. The Board dismissed the objection of the Opponent under Rule 106 EPC, which related to an alleged violation of the right to be heard (Article 113(1) EPC) and which justification can be summarized as follows:

D5 was used to attack the novelty of the subject-matter of claim 1. After the Board found that D5 was not prejudicial to the novelty of this subject-matter and had established that there was a distinguishing feature, then it was necessary to discuss inventive step starting from D5 to establish whether the distinguishing feature would justify an inventive step. This was further justified by the fact that D5 already suggested alternative solutions and D6 disclosed the distinguishing feature, and by the fact that the Board had a duty of examination of its own motion.

The Board notes, however, that the Opponent was granted the right to be heard under article 113(1) EPC in respect of the admissibility of its new line of attack on inventive step combining D5 with D6, since the issue of admissibility was discussed with both parties before deliberation. Only after discussion and subsequent deliberation the Board announced that it intended to exercise its discretion not to admit the new line of attack. Therefore the Board sees no violation of the Opponent's right to be heard. In fact, the Opponent's objection relies on the false assumption that a party has a right to have considered by the Board, at any time during appeal proceedings, an amended case on inventive step based on a prior art document if an attack based on novelty on that same document is judged not successful by the Board. This does not hold true since procedural limitations are laid down, in particular in Article 13(1) RPBA. The Board notes also that the Opponent erroneously misunderstood the not admitting of its request, i.e. the exercise of the Board's discretion not in its favour, for a violation of its right to be heard.

Finally, it has to be noted that, as concerns the line of attack based on D5 and common general knowledge, which was also not admitted into the appeal proceedings, the Opponent did not allege a violation of its right to be heard.