T 0482/18 - Clarity objection as assertion of fact

 Key points

• The opponent raises new objections under Art. 123(2) and Art. 84 during the oral proceedings before the Board, regarding a term in the claim not previously attacked on those grounds (the debate before the OD regarding Art. 123(2) concerned other features). The Board does not admit the attacks. In particular, the Board finds that the opponent's new submissions on Articles 123 (2) EPC and 84 EPC 1973 are [based] on the assertion a new fact according to which a particular subject matter of the patent, or a particular feature of the claims of the patent, is not clear and contains information that goes beyond the content of the original application. This even though it is based only on the patent as granted and the application as filed, which are part of the proceedings.
• The Board reviews the case law “Both decisions [T 1914/12 and T 701/97] are clearly based on the assumption that the content of the application in the version originally filed and of the granted patent are to be regarded as facts that are always and in full in the proceedings. New arguments on novelty (T 1914/12) or original disclosure (T 701/97) must therefore always be taken into account, since they do not introduce any new facts into the proceedings.”
• The Board does not share the view of those decisions.
• “ administrative proceedings before the EPO boards of appeal [are] based on factual submissions, i.e. the assertion of facts [by the parties]. It is alien to the character of judicial proceedings to name only the one legal reason for a claim, which has already been introduced and based on certain facts, and then leave it to the court to pick out the appropriate facts from the large pool of facts available. This also applies in the case of the principle of ex officio investigation in inter partes proceedings before the boards of appeal of the EPO. Here, too, the appellant must specifically present the individual facts on which he is basing himself in the proceedings. If this happens within the time limits set by the EPC, these facts are in principle in the proceedings, otherwise they need not be taken into account as being too late under Article 114 (2) EPC 1973 and in particular the RPBA specifying this legal norm.”
• “According to the above considerations, the introduction of new arguments requested by the opponent regarding the original disclosure and clarity of the term "rod-shaped" in feature M1.1 would necessarily include new [factual] submissions [" Sachvortrag" ], ie the introduction of new facts.”
• “The opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973 is therefore not only based on the facts generally mentioned above by the opponent (original ground for opposition; wording of the claims; original application), but also on the assertion a new fact according to which a particular subject matter of the patent, or a particular feature of the claims of the patent, is not clear and contains information that goes beyond the content of the original application. Since the alleged fact is not already in the appeal proceedings, the opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973, including possible arguments to prove the assertion, is not to be admitted to the proceedings.”

T 0482/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180482du1.html

Translation

Reasons for decision

1. Main request - Articles 123 (2) EPC and 84 EPC 1973

The claims of the main request are identical to those of auxiliary request 1, on the basis of which the opposition division maintained the patent.

The subject matter of independent claims 1 and 4 of the current main request meets the requirements of Article 123 (2) EPC and claims 1 and 4 those of Article 84 EPC 1973.

1.1 The objections raised by the opponent in the first instance under Article 123 (2) EPC and 84 EPC 1973 with regard to the features of claims 1 and 4 of the present main request were rejected by the opposition division. See the contested decision, pages 5 and 6 on the amended feature M1.7 in claims 1 and 4 of the main request at the time as well as pages 9 and 10 regarding the fulfillment of the requirements of Articles 123 (2) and 84 EPC after the addition of feature M1.1 in Claim 1 of the current main request (at the time auxiliary request 1) with the term "rod-shaped". In the statement of grounds of appeal, the opponent did not challenge the decision of the opposition division in this respect. As in the notice attached to the summons to the oral hearing, points 6.1 and 6.2,Having already provisionally expressed, the board also has no concerns that the subject-matter of Claims 1 and 4 meet the requirements of Article 123 (2) EPC and Claims 1 and 4 meet the requirements of Article 84 EPC 1973.

1.2 Admission of the opponent's new presentation

The board does not allow the announced new submission of the opponents with regard to objections under Article 123 (2) EPC and 84 EPC 1973 in the proceedings (Article 13 RPBA 2020).

1.2.1 During the oral proceedings before the board, the opponent submitted a request to this effect without initially raising any specific objections. It later claimed that the term "rod-shaped" added to feature M1.1 in the expression "control of rod-shaped products of the tobacco processing industry" was not originally disclosed but contradicted the description. In addition, the feature is unclear. Her intended new submission was not a renewed discussion of the objections already raised in the first instance under Article 123 (2) EPC and 84 EPC 1973, but new aspects with regard to the added term "rod-shaped".Before the opposition division, the opponent had not expressed any concerns with regard to an inadmissible extension of the feature in question supplemented by the term "rod-shaped" (contested decision, page 9) 10).

1.2.2 Even in the course of the appeal proceedings up to the oral hearing, the opponent raised no objections under Article 123 (2) EPC and 84 EPC 1973 with regard to the current main request the requirements of Article 123 (2) EPC and 84 EPC are met. Neither does the opponent of the preliminary opinion of the board of April 16, 2020, according to which the requirements of Articles 123 (2) EPC (feature M1.7) and 84 EPC 1973 (feature M1.1, "rod-shaped") have been met (see Notification according to Article 15 (1) VOBK 2020, points 6.1 and 6.2), objected to before the date of the oral hearing on March 11, 2021. As for the term "rod-shaped",the board agreed with the opposition division that this term was clear. She did not conduct her own substantive discussion of the question of clarity. After the opponent had not pursued this objection in the statement of grounds of appeal, the board assumed that the opponent had dropped this objection (as well as the aforementioned objection to the original disclosure of feature M1.7) in the appeal proceedings.that the opponent had dropped this objection (as well as the aforementioned objection to the original disclosure of feature M1.7) in the appeal proceedings.that the opponent had dropped this objection (as well as the aforementioned objection to the original disclosure of feature M1.7) in the appeal proceedings.

The patent proprietor also did not comment on Article 123 (2) EPC and Article 84 EPC 1973 before the oral proceedings before the board.

Pursuant to Article 12 (1) (a) or (d) RPBA 2020, the appeal proceedings until the oral hearing were solely concerned with the above statements made in the contested decision or in the notice of the board regarding Article 123 (2) EPC and Article 84 EPC 1973.

1.2.3 A submission regarding objections under Article 123 (2) EPC and 84 EPC 1973, which the opponent expressly announced as a new submission during the oral proceedings, would therefore constitute a change in the submission of the appeal within the meaning of Article 13 (1) RPBA 2020 represent.

1.2.4 Changes to the opponent's submissions after submitting his statement of grounds require justifying reasons, and their admission is at the discretion of the board (Article 13 (1) RPBA 2020). In addition, according to Article 13 (2) RPBA 2020

Any amendment to a party’s appeal case made ... after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances,  which have been justified with cogent reasons by the party concerned.

(Emphasis placed by the Chamber)

Opponents' arguments in favor of admitting the new presentation on Article 123 (2) EPC and 84 EPC 1973

1.2.5 Ex officio investigation - Article 114 (1) EPC 1973

a) During the oral proceedings, the opponent submitted that, under Article 114 (1) EPC 1973, the board had to review ex officio the basic formal requirements of Articles 123 (2) EPC and 84 EPC 1973, regardless of the point in time, on which concerns about this would be raised to the Chamber. In this respect, the opponent initially relied on decision T 701/97, headnote, according to which, if the opposition is based on the ground for opposition under Article 100 (c) EPC 1973 and its treatment in the contested decision, the board is obliged to check whether the requests are made the patent proprietor fulfilled the requirement of Article 100 (c) EPC 1973 or Article 123 (2) EPC. This duty of the board is independent of the point in time at which the objections were raised in the proceedings.

The opponent also relied on G 9/91, G 10/91 and T 1914/12 in support of its position. The board had dealt with the issues of original disclosure and clarity, and the opponent would like to comment on them. The objection under Article 100 (c) EPC had been raised in the opposition proceedings in good time, so that there was no new ground for opposition. The facts are otherwise identical.

The patent proprietor objected to admission because it would involve new submissions for her because the objections announced in the statement of grounds had not been raised. She pointed out that the board had already commented on the two topics in its preliminary opinion of April 16, 2020 and that the opponent did not want to react to this until the oral hearing.

b) It should be reiterated that with regard to the requirements of Articles 123 (2) EPC and 84 EPC 1973, in its communication under Article 15 (1) RPBA 2020, the board had confirmed the decision of the opposition division (see points 6.1 and 6.2 ). It can be left open whether the board actually met the opponent's duty to address these requirements after the opponent had not raised objections under Article 123 (2) EPC and Article 84 EPC 1973 in the appeal proceedings. Since the board did not deviate from the examination result of the opposition division, the legal position of the patent proprietor was not affected by the examination. Therefore, the Chamber was not denied the examination.

c) Furthermore, the board cannot derive from Article 114 EPC 1973 a fundamentally absolute justification, nor even the obligation asserted by the opponent to investigate ex officio, in particular to review all possible objections under all possible circumstances and at any time. Accordingly, objections raised by the opponent to Article 123 (2) EPC and Article 84 EPC 1973 on the basis of Article 114 EPC 1973 for the first time in the oral proceedings before the board are not to be admitted without further ado. This is explained below.

d) For this purpose, the application of Article 114 (1) EPC 1973 in the two aforementioned decisions T 1914/12 and T 701/97 will first be summarized and assessed below.

Article 114 EPC 1973, entitled "Examination by the European Patent Office of its own motion", reads as follows:

(1) In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

(2) The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

The opponent asserted that the interpretation of Article 13 (2) RPBA 2020 must not violate Article 114 (2) 1973 and referred to T 1914/12 in this regard. According to this decision (see guiding principle), the boards of appeal have no discretion in admitting arguments raised late and based on facts already in the proceedings.

As stated in decision T 1914/12 (under no. 7.2.3), Article 114 (2) EPC 1973 grants a margin of discretion with regard to facts submitted late, but not with regard to late-submitted arguments that relate to already support facts in the process. In the opinion of the board in decision T 1914/12, the RPBA can be used to clarify and interpret the EPC, but not to give the boards of appeal powers that are not provided for in the Convention. (See the abstract in "Case Law of the Boards of Appeal", 9th edition 2019, Chapter V.A.4.10.1.)

The Board's decision is based on the conceptual assumptions in the previous conclusion in r. 7.1.4 (2nd paragraph) (translation by the Chamber from the original French text):

For example, when a patent is opposed for novelty and the opponent argues the lack of novelty of claim 1 on the basis of the disclosure in paragraph [0017] of document D1, the ground invoked is lack of novelty (i.e. the claim that the subject-matter of the claim is included in the state of the art). This plea is based on one or more arguments (in the broad sense, argumentation), in this case the argument that the subject of the claim is disclosed in paragraph [0017] of document D1. A translation or a copy of this document is filed as (evidence). The argument is based on the fact that the text of this paragraph constitutes. It includes, for example, the argument (in the narrow sense) that a person skilled in the art, taking into account his general knowledge, would understand that the characteristic X which is not explicitly disclosed in paragraph [0017] is there. disclosed by implication.

In a nutshell, therefore

- the wording of paragraph 17 constitutes a fact

- the document in which paragraph 17 appears, constitutes evidence and

- the claim of the non-express but implicit disclosure of feature X in paragraph 17 constitutes an argument.

The application of this terminology in case T 1914/12 in No. 7.3 (1st paragraph) also led to the result:

The assertion made by the complainant for the first time in her letter of October 15, 2015 about the type of adhesive used is a further argument in support of the view taken by her that the subject-matter of claim 1 is new in relation to [sic] document D51 .

These assumptions are apparently in line with those in decision T 701/97, which the opponent also relied on. Under No. 1.2 it says there (translation from the English original by the Chamber):

... In examining the objections under Article 100 (c) EPC, the content of the application as filed and the patent as granted are to be regarded as relevant facts and any attempts to point out differences between them are to be regarded as arguments based on based on these facts. In such a case, the "legal and factual framework" within the meaning of Opinion G 10/91 (reasons 6) is not changed, since no new facts or evidence and no new reason need to be asserted. If Article 100 (c) EPC was raised as a ground for opposition and taken into account in the challenged decision, the board is obliged to assess correctly whether the respondent's requests comply with this Article. Therefore the board has to consider all arguments regardless of - the time at which they were introduced into the proceedings ... (emphasis added by the Chamber)

Both decisions are clearly based on the assumption that the content of the application in the version originally filed and of the granted patent are to be regarded as facts that are always and in full in the proceedings. New arguments on novelty (T 1914/12) or original disclosure (T 701/97) must therefore always be taken into account, since they do not introduce any new facts into the proceedings.

e) The [present Board] only partially shares the view expressed in the two decisions discussed:

- She shares the view expressly expressed in T 1914/12, according to which Article 114 (2) 1973 does not constitute a basis on which to reject arguments - which can also be described as legal arguments. Legislation ranked below the EPC, such as the Rules of Procedure of the Boards of Appeal, must be interpreted in the sense of the EPC, which in the aforementioned provision mentions facts and evidence but not arguments.

- The board also shares the view that the patent documents pending, in particular the content of the application as filed and the granted patent, constitute evidence with their full content.

- She still shares the view that the patent documents in the proceedings contain a number, usually a large number, of individual facts.

- However, it expressly does not share the view that all these facts are the subject of the appeal procedure without further notice, ie without express assertion, so that legal consequences can be linked to them at any time.

Such a view contradicts the nature of judicial proceedings, such as administrative proceedings before the EPO boards of appeal (see below, letter g), which are based on factual submissions, i.e. the assertion of facts. It is alien to the character of judicial proceedings to name only the one legal reason for a claim, which has already been introduced and based on certain facts, and then leave it to the court to pick out the appropriate facts from the large pool of facts available. This also applies in the case of the principle of official investigation in inter partes proceedings before the boards of appeal of the EPO. Here, too, the appellant must specifically present the individual facts on which he is basing himself in the proceedings. If this happens within the time limits set by the EPC, these facts are in principle in the proceedings, otherwise they need not be taken into account as being too late under Article 114 (2) EPC 1973 and in particular the RPBA specifying this legal norm.

f) According to the above considerations, the introduction of new arguments requested by the opponent regarding the original disclosure and clarity of the term "rod-shaped" in feature M1.1 would necessarily include new [factual] submissions [" Sachvortrag" ], ie the introduction of new facts. The opponent did not base its appeal on these grounds, but exclusively on a lack of novelty and inventive step and accordingly did not submit any facts on Article 123 (2) EPC and Article 84 EPC in the appeal proceedings up to the oral hearing. As stated above (under No. 1.2.1), according to the opponent, their intended new submission was not a renewed discussion of the objections already raised in the first instance under Article 123 (2) EPC and 84 EPC 1973, but about new aspects with regard to the added term "rod-shaped". This is about the assertion of a new fact, according to which a special subject matter of the patent, or a special feature of a claim of the patent, is not clear and contains information that goes beyond the content of the original application.

g) Admission of amendments according to Article 13 RPBA 2020

The Board of Appeal can refuse to admit new facts - in this case present here - under Article 13 RPBA 2020 if and to the extent that this provision is in accordance with higher-ranking law, namely - as the opponent has questioned - with the principle of official investigation anchored in Article 114 EPC 1973 - stands. The Board is of the opinion that this applies in any case to the present case.

In the decisions G 9/91 and G 10/91 (OJ EPO 1993, 408 and 420) cited by the opponent  (identical in the essential reasons), the Enlarged Board of Appeal made basic statements on the scope of the application of the principle of investigation of the EPO's own motion in opposition appeal proceedings. There it says (in the official German translation) among other things:

18. The purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the Opposition Division have not been based. Furthermore, in contrast to the merely administrative character of the opposition procedure, the appeal procedure is to be considered as a judicial procedure, as explained by the Enlarged Board in its recently issued decisions in the cases G 7/91 and G 8/91 (see point 7 of the reasons). Such procedure is by its very nature less investigative than an administrative procedure. Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage. ... 

The judging board understands this paragraph on the one hand as an expression of the principle of a generally more restrictive application of Article 114 (1) EPC 1973 in appeal proceedings than in opposition proceedings, and on the other hand as the specific application of this principle to the admission of new grounds for opposition.

In G 9/91 and G 10/91 it further states:

19. In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC). (Emphasis by the Board)

The statements in No. 19 make it clear that the scope of the substantive examination is not determined solely by the grounds for opposition asserted in the notice of opposition and substantiated in accordance with Rule 76 (2) c) EPC, as is the case with the granted patent. The content of No. 19 therefore has no effect on that of No. 18.

Against this background, restrictions on the admission of case amendments, as provided for in the Rules of Procedure of the Boards of Appeal, which came into force on January 1, 2020, are in principle compatible with the principle of ex officio investigation. As the following discussion shows, the application of these restrictions does not raise any concerns in the present case.

In the present case, the presentation of new facts was announced at the latest possible point in time, namely the oral hearing. When the board explicitly asked why the new submission on Article 123 (2) EPC and 84 EPC 1973 had not been made earlier, the opponent merely replied that under Article 114 (1) EPC 1973 the board had to review the requirements of Article 123 (2) EPC and 84 EPC 1973 ex officio. This view - based on T 701/97 and T 1914/12 by the opponent - is - as stated above - incorrect.

The opponent has not submitted and has proven that T 701/97 of August 2001 and T 1914/12 of April 2018 at the time of the oral hearing in the present case in March 2021 were established case law.

Nor did it claim that, trusting that the two aforementioned decisions constituted settled case law, it failed to raise objections under Article 123 (2) EPC and Article 84 EPC 1973 earlier in the appeal proceedings. As far as decision T 1914/12 of June 2018 is concerned, that would actually not have been possible, as it was only issued after the submission of the grounds of appeal in April 2018. The decisions cited in this decision that differ from their legal interpretation, in particular decisions T 1069/08 and T 1621/09, both from September 2011 (see T 1914/12, no. 7.2.2b)) as well as a large number of later ones based on them (ibid, no. 7.2.2c)), prove incidentally that T 701/97 of August 2001 by no means - at least with regard to later versions of the rules of procedure of the boards of appeal - had led to a solidified case law. After all that, the opponent could not assume that the judgment board would definitely apply T 701/97. It should therefore have raised objections under Article 123 (2) EPC and Article 84 EPC 1973 in the statement of grounds of appeal in April 2018.

If the announced new submissions on the two subjects of impermissible extension and clarity had been admitted, the patent proprietor as well as the board would have had to adjust to the new factual submission regarding inadmissible extension and clarity and examine the resulting legal consequences.

That would contradict the criteria for the exercise of discretion mentioned in Article 13 (1) RPBA, which concerns changes after the filing of the statement of grounds of appeal.

To thier application, Article 13 (1) RPBA 2020 states:

The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings.

Regarding the latter point, the board remarks: In response to the board's express question as to why the new submission on Articles 123 (2) EPC and 84 EPC 1973 had not been made earlier, the opponent merely replied that under Article 114 (1) EPC In 1973 the board had to review the requirements of Articles 123 (2) EPC and 84 EPC 1973 ex officio.

Of the criteria for the exercise of discretion under Article 13 (1) RPBA, the following are relevant in the present case:

In exercising its discretion, the board shall in particular take into account the status of the proceedings, the suitability of the change to resolve the questions legitimately raised by another party in the appeal proceedings or the questions raised by the board itself, and whether the change is detrimental to the economy of the procedure, [and when changing a patent application ...]

In the present case, the rejection of the admission of the announced new submission can obviously be based on all of the aforementioned criteria without violating the principle of official investigation:

- The change in the submission should be made at the latest possible state of the procedure (oral hearing),

- As regards the suitability of the amendment to resolve the questions admissibly raised by another party in the appeal proceedings or the questions raised by the board itself, it is simply true that no such questions were raised.

- The approval would have a negative effect on the procedural economy, as the patent proprietor's claim for an adjournment is not far off.

The criterion of prima facie relevance, not mentioned in Article 13 (1), but still rightly used by the Boards of Appeal, which the opponent relied on, could not intervene, in view of the state of the proceedings and the lack of cause for new submissions, by statements of the patent proprietor in proceedings before the board or statements by the board itself. There is no discernible justification why even allegedly highly relevant submissions should be admitted into the proceedings at the latest possible point in time of the late submission without the prompting of the other party or the board.

It follows without further ado that the criterion of complexity is also irrelevant (Article 13 (1) in conjunction with 12 (4) RPBA 2020).

h) Recourse to Art. 13 (2) RPBA (reproduced above under No. 1.2.4), which relates to the case of changes after delivery of the summons to the oral hearing, would therefore not be necessary at all. In this case, criteria from Article 13 (1) can also be used in accordance with the official explanations for this provision. In any case, the opponent did not assert "extraordinary circumstances" within the meaning of this provision. Furthermore, with regard to the criteria of Article 13 (1) RPBA discussed above, the Chamber sees no reason to deviate from the fact that the amendments are "generally disregarded".

1.2.6 The opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973 is therefore not only based on the facts generally mentioned above by the opponent (original ground for opposition; wording of the claims; original application), but also on the assertion a new fact according to which a particular subject matter of the patent, or a particular feature of the claims of the patent, is not clear and contains information that goes beyond the content of the original application. Since the alleged fact is not already in the appeal proceedings, the opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973, including possible arguments to prove the assertion, is not to be admitted to the proceedings.

After all of this, the board does not allow the opponent to submit a new submission on the objections under Article 123 (2) EPC and 84 EPC 1973 (Article 13 RPBA 2020).