T 0392/16 - Attacks: facts or arguments

Key points

• In this opposition appeal, the opponent had submitted that D1 was novelty destroying before the OD and had used D3 and D10 as closest prior art before the OD (D1 was not used for inventive step then). The opponent presents inventive step attacks based on D1 in appeal. The Board does not admit these attacks.
• The Board finds that the oppponent "should have considered that the proprietor's view [that D1 did not teach all features] could be shared by the Opposition Division, and should have accordingly formulated all, in its view, relevant objections on inventive step based on the evidence it had submitted." 
• The more interesting remark of the Board is this: " These objections are based on documents submitted with the notice of opposition. However, their specific combinations were never subject of the opposition proceedings. These objections amount thus to new alleged facts by the appellant (opponent) presented for the first time in the appeal proceedings." and "Under these circumstances the Board decided to exercise its discretion pursuant to Article 12(4) RPBA not to admit the new lines of attack on inventive step put forward for the first time in the statement of grounds of appeal because they amount to new alleged facts that the appellant should have presented during opposition proceedings."
• This decision of 19.10.2018 provides a neat answer to T1914/12 issued 17.09.2018 which stated that under Article 114(2) EPC, new 'arguments' must always be admitted whereas facts can be refused to be admitted if late-filed. 

EPO T 0392/16 - link

2. Admissibility of new objections on inventive step

2.1 During the opposition proceedings the appellant put forward the following inventive step objections to the subject-matter of claim 1 as granted:

- D3 in combination with D4;
- D3 in combination with D5;
- D3 in combination with D9;
- D10 in combination with D6;
- D10 in combination with D3; and
- D10 in combination with D2.

With the statement of grounds of appeal the appellant objected on inventive step only with the following combinations of prior art:

(i) D1 in combination with D4;
(ii) D1 in combination with D2;
(iii) D1 in combination with D4 and D2; and
(iv) D4 in combination with D6.

These objections are based on documents submitted with the notice of opposition. However, their specific combinations were never subject of the opposition proceedings. These objections amount thus to new alleged facts by the appellant (opponent) presented for the first time in the appeal proceedings.

2.2 According to Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA) the Board has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. The admission of this new factual framework is thus subject to the Board's discretion.

2.3 The appellant justified the submission of the new objections as a reaction to the Opposition Division's view during the oral proceedings that D1 did not disclose the three layered tread of claim 1 as granted. As a result of that assessment D1 and D4 gained relevance so as to be considered the closest prior art for an inventive step reasoning. The appellant also expressed the view that the appeal proceedings was not limited to review the contested decision but its purpose was also to avail the appellant the possibility to present further objections. The evidence on which the new objections were raised was filed at the earliest stage of the opposition proceedings and had been extensively discussed. The respondent should not be taken by surprise and should be in a position to refute these new lines of attack.

2.4 The Board however could not see any reason in the whole procedure that would justify raising these lines of attack at such a late stage.

The patent was maintained as granted, the evidence was known to the opponent and the conflicting issues for novelty and inventive step had been addressed during the opposition procedure by the parties (see notice of opposition and proprietor's reply from 9 September 2013). In dispute was among others whether D1 disclosed the claimed three layered structure of the tread. The appellant should have considered that the proprietor's view could be shared by the Opposition Division, and should have accordingly formulated all, in its view, relevant objections on inventive step based on the evidence it had submitted. This is analogous to the patent proprietor's situation in which the patent proprietor has to deal with objections raised by the opponent in its notice of opposition which might succeed or not, and files auxiliary requests as fall back positions. Thus, the possibility of using D1 and D4 as suitable closest prior art for the formulation of inventive step attacks could have been identified in response to the arguments submitted by the patent proprietor, and could well have been filed e.g. in advance of the oral proceedings before the Opposition Division.

It is also noted that the primary purpose of the appeal proceedings is the judicial review of the contested decision and not the continuation of the opposition procedure to allow the appellant to conduct its case anew (see e.g. G9/91, point 18; J10/12, point 15).

Under these circumstances the Board decided to exercise its discretion pursuant to Article 12(4) RPBA not to admit the new lines of attack on inventive step put forward for the first time in the statement of grounds of appeal because they amount to new alleged facts that the appellant should have presented during opposition proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.