- The Board does not admit a new objection of the opponent submitted with the Statement of grounds.
- " The board has come to the conclusion that the objection has been raised for the first time in the statement of grounds of appeal and represents an alleged new fact within the meaning of Article 114(2) EPC and Article 12(4) RPBA rather than an argument of the sort that can be presented at any time during the proceedings."
- This remark is (likely) a follow-up to T1914/12 (proposing that new arguments can not be held inadmissible under Art. 114 EPC) by analysing the matter in line with T 392/16 (labelling a new attack a new fact rather than an argument).
- The Board's phrase "an argument of the sort that can be presented at any time" suggest that there also arguments that cannot be presented at any time. Perhaps it could have been said that the objection at issue was not an "attack of the sort that can be presented as argument at any time during the proceedings", if the reasonng of T1914/12 that arguments are always admissible.
EPO 1167/13 - link
3. Admission of a new objection into the appeal proceedings (Articles 114(2) EPC and 12(4) RPBA)
3.1 In the statement of grounds of appeal, the appellants raised the objection under Articles 100(b) and 83 EPC that the person skilled in the art could not carry out the invention over the whole range claimed, because the circuit described in the patent in suit was only suitable for detecting serial, not parallel, arc faults, which was however not reflected in claim 1. The respondent considered this to be a new objection which was raised for the first time in the statement of grounds of appeal and therefore should not be admitted into the appeal proceedings.
3.2 The board has come to the conclusion that the objection has been raised for the first time in the statement of grounds of appeal and represents an alleged new fact within the meaning of Article 114(2) EPC and Article 12(4) RPBA rather than an argument of the sort that can be presented at any time during the proceedings. In the first instance proceedings, the appellants raised two objections concerning Article 100(b) EPC. Neither of these objections remotely related to the question of the type of arc fault to be detected, and in particular not to the specific question of whether the invention can be carried out over the whole range claimed. The corresponding objection thus cannot reasonably be considered as a mere argument, which was provided in support of alleged facts that have already been presented. Since the appellants did not contest during the oral proceedings before the board that the new objection is a new alleged fact, the board sees no reason to deviate from the above assessment.
3.3 According to Article 12(4) RPBA the board has the discretionary power to hold inadmissible facts which could have been presented in the first instance proceedings. The board notes that the opposition division stated in its preliminary opinion of 10 December 2012 that the requirements of Article 83 EPC were considered to be fulfilled. The board concludes that the appellants could not have been surprised by the final decision of the opposition division to reject the objection under Article 83 EPC. The further objection under Article 83 EPC could, and should, therefore have been presented already in the first instance proceedings. Furthermore, the questions that were raised by the new objection are not in any way related to the other objections raised in the first instance proceedings in the context of Article 100(b) EPC, and admitting them into the appeal proceedings would have required a fresh discussion of points that had not been at issue before the opposition division.
3.4 Moreover, the board is not convinced by the appellants' argument that the objection at issue was in fact presented during the oral proceedings before the opposition division, since this allegation was neither confirmed by the respondent nor is it reflected in the minutes. The board is also not aware of any request of the appellants for correction of the minutes.
3.5 Thus, the board exercised their discretion under Article 12(4) RPBA to not admit the new objection into the appeal proceedings.
3.6 The board therefore concludes that the patent in suit discloses the invention according to claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, so that the opposition ground under Article 100(b) EPC does not prejudice the maintenance of the patent.
I regret the focus on "fact or argument", and also the tenor of the venerable twin G Decisions on what constitutes a new "ground" of attack in opposition.
ReplyDeleteFor me, the sensible approach is to enquire whether the contested section in the Substantiation of the Notice of Appeal is a "new ground" of invalidity. Thus, here, when the Art 83 attacks fought out in front of the OD all fail, and opponent's response is to include in the substantiation of the appeal a completely new Art 100(b) line of attack, that to me is a new "ground" of invalidity, raised for the first time at the appeal instance. And therefore one that is easily refused admission to the appeal proceedings.