Key points
- The Board holds an inventive step attack filed with the Statement of grounds inadmissible under Art. 12(4) RPBA 2007.
- Which is interesting because Art. 12(4) RPBA 2007 refers to "the power of the Board to hold inadmissible facts, evidence or requests".
- So, is an inventive step attack a fact, evidence, or a request?
- The new attack is based on D1. During the opposition proceedings, the parties considered D10 to be the closest prior art.
- "According to the minutes of the oral proceedings before the opposition division, the opponent explicitly renounced raising an objection starting from D1 as the closest prior art against this first auxiliary request".
- The Board considers the claims to be inventive.
T 1055/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t171055eu1.html
6. Inventive step
6.1 Consideration of the reasoning based on D1 as the closest prior art
6.1.1 Claim 1 at issue corresponds in substance to claim 1 of the first auxiliary request upheld by the opposition division, combining the features of granted claims 1, 4 and 5.
6.1.2 During opposition proceedings, the parties considered D10 the closest prior art with respect to this then pending first auxiliary request (point 16.4.1 of the impugned decision).
6.1.3 In its statement of grounds of appeal, the opponent used document D1 as the closest prior art.
6.1.4 While the opponent had cited both D1 and D10 as possible closest prior art for the main request pending before the opposition division (point 15.3.1 of the impugned decision), it decided to argue lack of inventive step of the then pending first auxiliary request only in view of D10 (point 16.4.1 of the impugned decision, as indicated). According to the minutes of the oral proceedings before the opposition division, the opponent explicitly renounced raising an objection starting from D1 as the closest prior art against this first auxiliary request (point 4.3 of the minutes of oral proceedings).
The first auxiliary request under consideration in the impugned decision had only been filed during the oral proceedings before the opposition division, but its claim 1 was identical to claim 1 of the first auxiliary request filed on 18 November 2016 in preparation for these oral proceedings, and was therefore known to the opponent.
6.1.5 Under these circumstances, the opponent's objection starting from D1 as the closest prior art should have been raised before the opposition division. In its statement of grounds of appeal, the opponent sets out why, in its opinion, D1 should be considered the closest prior art but does not provide any reason why this had not been raised during the opposition proceedings.
6.1.6 Hence, the board decided to disregard the reasoning based on D1, using its discretion under Article 12(4) RPBA 2007 in conjunction with Article 25(2) RPBA 2020.
Dear Peter,
ReplyDeleteWould you argue that inventive step attacks consisted in general purely of arguments?
I think that generally an inventive step attack consists of both factual assertions and (legal) arguments (the latter in my view including what the fictitious skilled person would or would not do in view of the cited documents). However, an inventive step attack may for the larger part be based on the same factual assertions as a novelty attack, possibly in combination with alleged common general knowledge to provide the missing feature. CGK arguably being on the 'arguments side' of the argument/fact divide. In that case (facts for the large part the same as for novelty) at least under Art. 12(4) RPBA 2007 it is important to carefully identify the factual assertions that are not admitted.
ReplyDeleteMight it help the discussion to think about matters of fact and matters of law, and which is which. It is trite to say that obviousness is a finding of law, based on underlying findings of fact. Precisely what knowledge was in the possession of the skilled person at the date of the claim is a matter of fact, to be determined at trial. So too, I would say, is what was the most realistic prior art "starting point" (under EPO-PSA) for that person. So too is what the skilled person would, not could, have done at the relevant date.
ReplyDeleteSo when the Board declines to admit the new "fact" that D1 is the best starting point, it is doing no more than declining to admit as a "fact" an argument that the Opponent positively abandoned/withdrew/surrendered/disavowed at the OP's before the OD.
In patent litigation in England, the court at first instance determines the facts. You don't get to appeal just because you don't like the facts found. Instead, if you want to appeal, you need to show that the judge got the law wrong. This hardly ever happens, which is why only about a third of those who lose on obviousness at first instance in England ever take the decision to appeal. The crucial difference is between i) facts established by evidence, and ii) mere attorney argument. The court's decision must be based exclusively on the evidence. The argument (just as much about the issues of fact as the issues of law) serves only to help the judge to grasp more accurately both the issues of fact and those of law.
Peter, I guess you see it differently. If so, do say.
Hi MaxDrei, briefly: 1. the Boards of Appeal have the competence and task to review both findings of fact and conclusions in law ("the boards have competence to review appealed decisions in full, including points of law and fact (see e.g. explanatory remarks to new paragraph 2 of Article 12 of the Rules of Procedure of the Boards of Appeal, OJ Suppl. 2/2020). This is in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office"; T1604/16).
ReplyDelete2. I think that under Art.12(4) RPBA 2007 it is important to identify the (new) factual assertions, because an inventive step attack may in certain cases involve e.g. basically the same factual assertions as for a novelty attack, but combined with arguments of the type "if not directly and unambiguously disclosed, then at least strongly suggested".
Hi Max, see also today's decision T2781/17, r.2.2. where I think it would have been more precise to discuss admissibility of any factual assertions comprised in the novelty attack. As illustrated in that case, although the attack based on D4 was newly submitted in appeal it was based on facts already in the file.
ReplyDeleteHi Peter, you mention T 2781/17, r. 2.2. For me, this reasoning is nothing more or less than a 1:1 application of the logic of G7/95.
ReplyDeleteUnder that logic, as r. 2.2 makes clear, in order to examine the Art 56 line of attack you must inevitably work through the novelty enquiry. So, in these special circumstances, there isn't really any "new" attack at all.
The OD found the claim OK. The Board then ratified the OD Decision. Nice and tidy. An endorsement of the "quality" of work done by the OD.
The Board's admission of the "new" novelty attack gives neither Party to the opposition anything to complain about, yet allows the Board to assert that it has considered all possible accusations of invalidity. A "clean sweep" as it were. No residual odour of invalidity hanging over the patent.
I assume that, for Chairs of TBA's, such considerations have a high priority. They want to minimise the number of corporate users of the EPO who might otherwise around bad mouthing the service provided by the EPO.