T 0073/15 - New novelty attacks in appeal

Key points

• The OD had rejected the novelty attacks. The opponent submit new attacks based documents filed for the first time in appeal. Opponent argues that the attacks are admissible in view of the amendments made by proprietor before the OD. 
•  'The amendments in question had however been made at the earliest possible stage of the opposition procedure, namely in the response to the notice of opposition.
  Accordingly, had the opponent considered that these amendments necessitated the presentation of further documents, this could and should have been done at that stage of the opposition procedure (cf. Article 12(4) RPBA).
  The [opponent] argued that since it had been considered that the claims suffered from other defects, it was not thought necessary to present further documents.
  Whilst this argument gives some insight into the strategy adopted by the opponent, it does not provide any explanation or justification as to why the documents and associated arguments were not submitted during the proceedings before the opposition division, but only shows that a different approach had been chosen." 

EPO T 0073/15 -  link

2. Novelty - admittance of the objection raised in the statement of grounds of appeal

The appellant did not contest the conclusions of the decision under appeal with respect to novelty based on the documents available in the opposition proceedings but advanced a new attack, based on documents filed for the first time with the statement of grounds of appeal.

As justification for the submission of these documents the appellant referred to the presentation of amended claims by the respondent.

The amendments in question had however been made at the earliest possible stage of the opposition procedure, namely in the response to the notice of opposition.

Accordingly, had the opponent considered that these amendments necessitated the presentation of further documents, this could and should have been done at that stage of the opposition procedure (cf. Article 12(4) RPBA).

The appellant argued that since it had been considered that the claims suffered from other defects, it was not thought necessary to present further documents.

Whilst this argument gives some insight into the strategy adopted by the opponent, it does not provide any explanation or justification as to why the documents and associated arguments were not submitted during the proceedings before the opposition division, but only shows that a different approach had been chosen.

Accordingly the appellant has failed to demonstrate to the Board's satisfaction that it should not have advanced the arguments and documents filed with the statement of grounds of appeal as the basis of a new novelty attack during the proceedings before the department of first instance. Moreover there were several reasons why the evidence provided seems doubtful as detailed in the communication sent by the Board in preparation of the oral proceedings.

The Board therefore considers it appropriate to exercise its power pursuant to Article 12(4) RPBA to hold inadmissible the new novelty objection based on D14a, D14b, D15 and D16.

There being no further novelty objections raised in appeal proceedings, the requirements of Article 54 EPC are held to be satisfied.