T 1029/14 - What is a new ground?

Key points

• In appeal, the opponent argues lack of inventive step over D1. D1 was cited for novelty in the opposition procedure. The attack is  not admitted, because it was late filed. 
• However, the Board adds that  " It is further questionable, whether the line of attack starting from D1 as the closest prior art can be discussed at all in the appeal proceedings without the agreement of the patent proprietor. The appellant argues that the objection concerning inventive step starting from D1 does not constitute a fresh ground of opposition and can be examined in appeal proceedings without the agreement of the patentee, since D1 has been used to attack novelty. "
• " In decision T 131/01 the Board held that in a case where the ground of lack of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. Therefore it held that the objection of lack of inventive step is not a fresh ground for opposition [].
  However, in T 131/01 the opponent had already indicated in the notice of opposition that the claimed subject-matter lacks an inventive step in the event that it is found to be novel []. Therefore T 131/01 differs from the present case, where the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel." 
• "The Board concludes that in the presence case, the objection concerning inventive step starting from D1 has to be considered to constitute a fresh ground of opposition in line with the finding in T 448/03 which cannot be discussed without the consent of the proprietor, which was not given in the present case." 
• As a comment, case T 448/03  has not been cited before in a decision and is not in the Case Law Book. T 131/01 is cited numerous times. 

EPO T 1029/14 - link

3.6 Claim 1 of the contested patent therefore fulfils the requirements of Article 54 EPC.

4. Admissibility of the new ground of opposition

4.1 During opposition proceedings the appellant, then opponent, crossed on Form 2300 the box for the ground of opposition pursuant to Article 100(a) in combination with Article 56 EPC. However, lack of inventive step was neither substantiated in the notice of opposition nor later discussed during the opposition proceedings (see impugned decision, point 3.4 of the reasons).

4.2 The first time that the appellant argued that the subject-matter of claim 1 lacks an inventive step was during appeal proceedings.

The appellant submits two lines of objection:

a) In the statement setting out the grounds of appeal it is argued that the subject-matter of claim 1 is obvious when starting from document D2 as the closest prior art. 

b) In the letter dated 5 April 2018 it is argued that the subject-matter of claim 1 is obvious when starting from document D1 as the closest prior art.

4.3 Concerning a)

4.4 Concerning b)

4.4.1 In the statement setting out the grounds of appeal D1 is not mentioned at all in the context of inventive step.

The objection concerning inventive step based on D1 was presented for the first time in the letter submitted on 5 April 2018, i.e. two working days before the oral proceedings before the board of appeal took place. Therefore the objection has been raised only at an extremely late stage of the proceedings and represents a complete change of the appellant's case for which not even the provisional opinion expressed in the annex to the summons does not provide any justification.

The respondent confirmed during oral proceedings that it was not in a position to deal with the new attack without an adjournment of the oral proceedings.

Therefore this line of objection is not admitted into the proceedings pursuant to Article 13(3) RPBA.

4.4.2 Notwithstanding the above conclusion it is further questionable, whether the line of attack starting from D1 as the closest prior art can be discussed at all in the appeal proceedings without the agreement of the patent proprietor.

The appellant argues that the objection concerning inventive step starting from D1 does not constitute a fresh ground of opposition and can be examined in appeal proceedings without the agreement of the patentee, since D1 has been used to attack novelty. To support this argument it refers to T 131/01 (D9) and T 597/07 (D10).

In decision T 131/01 the Board held that in a case where the ground of lack of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. Therefore it held that the objection of lack of inventive step is not a fresh ground for opposition (headnote).

However, in T 131/01 the opponent had already indicated in the notice of opposition that the claimed subject-matter lacks an inventive step in the event that it is found to be novel (see point 3.2. of the reasons). Therefore T 131/01 differs from the present case, where the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel.

The situation underlying T 597/07 is similar to case T 131/01 where inventive step had also been discussed during opposition proceedings (point 2.6 of the Reasons).

The Board therefore concludes that the present case is to be distinguished from those underlying T 131/01 and T 597/07.

Case T 448/03 is similar to the present one in that inventive step was not discussed at all in opposition proceedings (see point 5.2 of the Reasons), but for the first time only in the appeal proceedings (point 5.3 of the reasons). In T 448/03 it is concluded, in line with the principles set out in decision T 131/01, that an objection concerning inventive step is to be considered a fresh ground, if it is raised for the very first time in the appeal proceedings (point 5.4 of the Reasons), irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

The Board concludes that in the presence case, the objection concerning inventive step starting from D1 has to be considered to constitute a fresh ground of opposition in line with the finding in T 448/03 which cannot be discussed without the consent of the proprietor, which was not given in the present case.

Order

For these reasons it is decided that:

The appeal is dismissed.