T 1038/18 - (I) The respondent's rejoinder in appeal

 Key point

• The opponent appeals. 
• “ With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant [opponent] submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.”
• “The respondent [patentee] objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings.
• The Board, in a very important analsyis: “The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.”

• “It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant [opponent] could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. 
• “in particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant [/opponent] in the circumstances noted above to speculate at that point in time which lines of defence the respondent [/patentee] would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. 
• Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant [opponent] already submitted arguments in support of the mentioned objection in respect of dependent claims [in the first instance proceedings and in the SoG] does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.”
  
  
• The Board, in a further important remark: “It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.”
• I'm not sure if only changes of a party's appeal case which can be held inadmissible without violating Art. 113 (1) EPC, are amendments to the appeal case in the sense of the RPBA.

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

The appellant submitted that the issue of inventive step over document D1 as closest state of the art was already addressed during the first-instance proceedings and in particular by the opposition division in the decision under appeal, that the objection was already raised in the statement of grounds of appeal, and that with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by the opposition division's as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ("Case Law of the Boards of Appeal", EPO, 9th edition (2019), section IV.C.3.4.2), no need to present at that time arguments relating to inventive step. Furthermore, the preliminary assessment of novelty presented by the board deviated substantially from that of the opposition division so that it was justified to react to the preliminary opinion of the board by submitting substantive arguments of lack of inventive step.

The board notes that in the communication annexed to the summons to the oral proceedings the board expressed the preliminary opinion that, contrary to the opposition division's view (see point 3.1.2 above, second paragraph), document D1 disclosed first and second microimage components having different colour densities and that, also contrary to the opposition division's view, document D1 did not disclose a coloured layer as claimed, and in particular a layer such that the second microimage components "appear in a colour dependent [...] on the [...] coloured layer" (see point 3.1.5 above). Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's submissions as regards the claimed feature relating to the microimage components having different colour densities but, on the other hand, the appellant was confronted with the board's preliminary opinion that the different colour of the claimed layer would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device.

In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above, that the appellant, in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.

[...]

5. Auxiliary request 2

5.1 Novelty

Claim 1 of auxiliary request 2 differs from claim 1 of the main request in that the claim further requires that the second microimage components are formed as a screened pattern. It was undisputed that this feature was new over document D1. Therefore, the device of claim 1 of auxiliary request 2 is new over the device of document D1 in the distinguishing feature already identified in point 3.1.5 above, and in that the second microimage components are formed as a screened pattern (Articles 52(1) and 54(1) EPC).

5.2 Addition to the appellant's case in appeal in reply to the respondent's reply to the statement of grounds of appeal - Consideration of Article 13(1) RPBA 2020

5.2.1 With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.

The respondent objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings. In addition, in the statement of grounds of appeal the appellant already referred to their first-instance submissions relating, among other issues, to the issue of novelty over document D3 under Articles 52(1) and 54(3) EPC and to the patentability of the dependent claims, and all these submissions were silent as to the validity of the priority and the new attack of inventive step. Therefore, the new appellant's submissions constituted a significant deviation from the case previously presented by the appellant and should not be admitted into the proceedings.

5.2.2 The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.

It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. In particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant in the circumstances noted above to speculate at that point in time which lines of defence the respondent would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant already submitted arguments in support of the mentioned objection in respect of dependent claims does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.

5.2.3 It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.