T 0325/16 - (I) Citing case law is no case amendment

 Key points

• “The [opponent] requested that the [patentees] submission based on decision T 1684/16 not be admitted as it had only been presented at the oral hearing and as it was hence late filed. In this case, the [patentee's] submission is a legal argument relating to the interpretation of Article 56 EPC, more specifically to the application of the problem/solution approach. ”
• " Since the [patentee's] submission is thus a legal argument, the board had no discretion to not admit it into the proceedings (T 1914/12, point 7.2.3 of the Reasons)."
• " This consideration is fully in line with, for instance: T 861/93, which held that "decisions relied on by a party in support of its arguments are never citations which can be rejected as late under the provision of Article 114(2) EPC. Arguments are not covered by that provision. Therefore, decisions to which a party refers in support of its arguments are to be considered part of those arguments and may not be rejected as late." (point 12 of the Reasons; translation provided by the current board)".

T 0325/16 - link after jump

https://www.epo.org/law-practice/case-law-appeals/recent/t160325eu1.html

The respondent requested that the appellant's submission based on decision T 1684/16 not be admitted as it had only been presented at the oral hearing and as it was hence late filed.

In this case, the appellant's submission is a legal argument relating to the interpretation of Article 56 EPC, more specifically to the application of the problem/solution approach. It is part of this approach that if the objective technical problem resides in the achievement of a certain effect, in this case a higher stability, a prior-art document combined with the closest prior art renders the claimed subject-matter obvious only if it contains a pointer or otherwise creates a reasonable expectation that by means of this subject-matter the effect could be achieved. This principle became part of the boards' reasoning in T 1684/16 and has been used by the appellant and relied upon by the board in the case at issue.

Since the appellant's submission is thus a legal argument, the board had no discretion to not admit it into the proceedings (T 1914/12, point 7.2.3 of the Reasons).

This consideration is fully in line with, for instance:

- T 861/93, which held that "decisions relied on by a party in support of its arguments are never citations which can be rejected as late under the provision of Article 114(2) EPC. Arguments are not covered by that provision. Therefore, decisions to which a party refers in support of its arguments are to be considered part of those arguments and may not be rejected as late." (point 12 of the Reasons; translation provided by the current board)

- T 2988/18, according to which "[a]rguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings" (point 1.4 of the Reasons)

- R 17/09, where it was held that: "The reference to decisions in a decision, even decisions not cited to the party earlier in writing or at the oral proceedings, cannot support an objection of there being a fundamental procedural violation under Article 112a(2)(c) EPC. The parties to EPO proceedings are presumed to know the law relating to the EPC, including the relevant decisions."

The board agrees with the case law. Since the board found the appellant's submission based on decision T 1684/16 to reflect a correct understanding of the case law, the submission was admitted and endorsed in the present decision.