T 1230/15 - The very nature of the PSA

Key points

• "The  [opponent] argued that its right to be heard had been violated at the oral proceedings before the opposition division since it was allowed to present only two lines of attack on inventive step, namely, one starting from D1 and one starting from D11, each in combination only with a single document." 
• " The [opponent's] understanding appears to be that there exists an absolute right to present all possible inventive-step attacks orally before the opposition division. Anything else incurs, in its view, a violation of its right to be heard. This is, however, in fundamental contradiction to the problem and solution approach as applied by the departments of the EPO for assessing inventive step." 
• " The first step in this approach entails selecting the closest prior art []. It is in the very nature of the problem and solution approach that the closest prior art constitutes "the easiest route for the skilled person to arrive at the claimed solution or the most promising starting point for an obvious development leading to the claimed invention" []. If an invention is not obvious when starting from the closest prior art, it is reasonable to say that it will not be obvious when starting from a more remote document." 
• "On the basis of the [opponent's] own account, it was allowed to present, at the oral proceedings [before the OD], a complete problem and solution approach starting from a document of its choice, namely, D1, as the closest prior art []. The opponent was also allowed to reply to the patent proprietor's arguments based on D5 as the closest prior art []. Indeed, D5 was ultimately used as the only closest prior-art document in the appealed decision. Finally, the opponent was also allowed to present a further attack starting from D11 []. This was another document taken from the pool of (potential) closest prior-art documents proposed by the opponent." 
• " This chain of events shows that the opponent had the opportunity to present its comments on the essential legal and factual reasoning on which the appealed decision is based (Article 113(1) EPC) and cannot, hence, demonstrate a violation of the right to be heard."
• " As regards the argument that the [OD] discussed further inventive-step attacks as evidence for patentability, the board cannot agree with the appellant's reading of the appealed decision. The relevant section [] merely sets out the opposition division's reasoned assessment as to why some of the documents which the opponent had cited were not the closest prior art.
• " It follows that no violation of the right to be heard has occurred, at any rate none which would justify the remittal of the case to the opposition division. The board thus proceeded with the examination of the appeal as to the substance".
• As a comment, with hindsight, an opponent could possibly try to attack the argument "If an invention is not obvious when starting from the closest prior art, it is reasonable to say that it will not be obvious when starting from a more remote document." If the argument is not in the impugned decision, there is a gap in the reasoning why the non-obviousness over D1, D5 and D11 show that the claimed subject-matter is not obvious having regard to the other prior art documents on file. If the impugned decision includes that "it is reasonable to say", the question arises if this is not a "fact" in the sense of Article 113 EPC (note that some arguments are actually facts according to the recent case law about the admissibility of late filed arguments under Article 114 EPC).
  
  
  EPO T 1230/15 - link

2. Right to be heard and remittal

2.1 The appellant [opponent] argued that its right to be heard had been violated at the oral proceedings before the opposition division since it was allowed to present only two lines of attack on inventive step, namely, one starting from D1 and one starting from D11, each in combination only with a single document. In addition, the opposition division discussed in the decision under appeal, as evidence of patentability, further inventive-step attacks which had not been discussed at the oral proceedings. In view of these deficiencies, the case had to be remitted to the opposition division. Moreover, a decision by the board on those inventive step arguments would deprive the appellant of a first-instance decision on them.

2.2 The appellant's understanding appears to be that there exists an absolute right to present all possible inventive-step attacks orally before the opposition division. Anything else incurs, in its view, a violation of its right to be heard.

2.3 This is, however, in fundamental contradiction to the problem and solution approach as applied by the departments of the EPO for assessing inventive step.

The first step in this approach entails selecting the closest prior art (Case Law of the Boards of Appeal of the European Patent Office, 8th edn., 2016 ["Case Law"], Chapter I.D.2. first paragraph). It is in the very nature of the problem and solution approach that the closest prior art constitutes "the easiest route for the skilled person to arrive at the claimed solution or the most promising starting point for an obvious development leading to the claimed invention" (ibid., Chapter I.D.3.1., second paragraph). If an invention is not obvious when starting from the closest prior art, it is reasonable to say that it will not be obvious when starting from a more remote document.

2.4 In cases where there is arguably more than one document which might constitute the closest prior art, the discussion should ideally be structured so as to first establish which document(s) constitute(s) the most promising starting point (ibid., Chapter I.D.2., last paragraph). As a result of such a discussion, the closest prior art may or may not turn out to be a document proposed by the opponent.

2.5 It appears that this first round of discussion to establish the (single) closest prior art did not take place with the necessary clarity of purpose in the present case. It may have even been omitted. As unfortunate as this course of action may be, it is on its own not sufficient for the board to decide that a violation of the right to be heard occurred, let alone a substantial one which would justify the remittal of the case.

2.6 On the basis of the appellant's own account, it was allowed to present, at the oral proceedings, a complete problem and solution approach starting from a document of its choice, namely, D1, as the closest prior art (corrected minutes of the oral proceedings, page 2), and it presumably presented at this point its strongest case. The opponent was also allowed to reply to the patent proprietor's arguments based on D5 as the closest prior art (statement setting out the grounds of appeal, page 6). Indeed, D5 was ultimately used as the only closest prior-art document in the appealed decision. Finally, the opponent was also allowed to present a further attack starting from D11 (corrected minutes of the oral proceedings, page 2). This was another document taken from the pool of (potential) closest prior-art documents proposed by the opponent.

2.7 This chain of events shows that the opponent had the opportunity to present its comments on the essential legal and factual reasoning on which the appealed decision is based (Article 113(1) EPC) and cannot, hence, demonstrate a violation of the right to be heard.

2.8 As regards the argument that the opposition division discussed further inventive-step attacks as evidence for patentability, the board cannot agree with the appellant's reading of the appealed decision. The relevant section (points 6.1.5 to 6.1.8) merely sets out the opposition division's reasoned assessment as to why some of the documents which the opponent had cited were not the closest prior art.

2.9 It follows that no violation of the right to be heard has occurred, at any rate none which would justify the remittal of the case to the opposition division. The board thus proceeded with the examination of the appeal as to the substance (Article 111(1), second sentence, EPC).

3. Objection under Rule 43(2) EPC

3.1 In the statement setting out the grounds of appeal, the appellant argued that the main request, as amended during opposition proceedings, did not comply with the requirements of Rule 43(2) EPC in view of the fact that the set of claims contained three independent product claims, namely, claims 1, 13 and 23. The latter two could have been easily formulated as dependent claims, since they were in fact more restricted embodiments of claim 1.

3.2 Firstly, the granted claims already contain three independent product claims, whereby granted claims 14 and 24 are identical to claims 13 and 23 of the main request. Secondly, Rule 43 EPC relates to the provisions governing the application; not the amendment of claims in opposition. Lastly, the opponent had withdrawn its request to discuss the objection under Rule 43(2) EPC in the opposition proceedings (appealed decision, Facts and submissions, point 1.6). It provided no reason whatsoever why it revisited the objection in these appeal proceedings.

3.3 In view of the above, the objection must fail.