T 0087/15 - Attack not preserved for appeal

Key points

• "The four saddest words from the Court of Appeal are these: "Great argument; not preserved."" (R. Stumpf and K.Vogel, link)
• The Board does not admit the inventive step attack of the opponent, although the attack starting from D1 was in the Notice of opposition. 
• "However, the [opponent] had agreed during the oral proceedings before the opposition division that D2, and hence not D1, was to be considered the closest prior art". "In addition, the [opponent] did not further pursue the inventive step attack based on D1 after the opposition division had announced that the inventive-step attack based on D2 as the closest prior art failed, stating that it had no further comments "
• Therefore, the Board does not admit the attack in appeal.
• "The new allegation of fact based on the different choice of the closest prior art D1 thus clearly deviates from the [opponent's] position taken previously before the opposition division. By not pursuing this attack before the opposition division and reintroducing it before the board, the [opponent] avoided a decision on the relevance of this attack by the opposition division and, provided the new attack were admitted, would oblige the board to decide for the first time on the relevance of this attack."

EPO T 0087/15 - link

2.3 The board acknowledges that an objection of lack of inventive step considering D1 as the closest prior art was raised by the [opponent] in its notice of opposition (point 4.2). However, the appellant had agreed during the oral proceedings before the opposition division that D2, and hence not D1, was to be considered the closest prior art (see the penultimate paragraph on page 2 of the minutes of the oral proceedings before the opposition division and the fifth paragraph from the bottom of page 7 of the opposition division's decision).

In addition, the appellant did not further pursue the inventive step attack based on D1 after the opposition division had announced that the inventive-step attack based on D2 as the closest prior art failed, stating that it had no further comments (minutes page 4).

The new allegation of fact based on the different choice of the closest prior art D1 thus clearly deviates from the appellant's position taken previously before the opposition division. By not pursuing this attack before the opposition division and reintroducing it before the board, the appellant avoided a decision on the relevance of this attack by the opposition division and, provided the new attack were admitted, would oblige the board to decide for the first time on the relevance of this attack.