T 1038/18 - (IV) Case amendment after summons

 Key points

•  To jump to the conclusion: “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.”
• So what are the exceptional circumstances? I think the Board is quite liberal but as noted below, the reasoning is a bit unclear as to what precisely the relevant procedural facts are.
• “The board notes that in [the preliminary opinion the Board expressed the view that]  that, contrary to the opposition division's view[,] D1 disclosed [features X and Y] and that, also contrary to the opposition division's view, document D1 did not disclose [feature Z]. 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 [opponent] submissions as regards the claimed feature [X and Y] but, on the other hand, the appellant was confronted with the board's preliminary opinion that [feature Z] 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 [see below], that the appellant [opponent], 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. ”
• The opponent/appellant also submitted 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] 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 ([CLBA IV.C.3.4.2]), no need to present at that time arguments relating to inventive step.”
• As a comment, it is not clear to me if the patentee/respondent had defended feature Z as a distinguishing feature in its appeal reply brief, or that the Board identified the feature of its own motion as providing a difference with D1. In the former case, the appropriate time to submit inventive step arguments in reply would be the appellant's/opponent's rejoinder. In the latter case, this would be a regular reason to admit response submissions under Art. 13(2). So, in the former case, it is remarkable that the Board does not explain why the appellant/opponent was not expected to have submitted the attack already with its rejoinder. In the latter case, the  Board's extensive reasoning on admissibility seems superfluous. 

T 1038/18 -

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.