T 0073/20 - Obligation to identify under Art. 12(4) RPBA 2020

Key points

•  With about two years delay, we are seeing an uptick in cases about Art. 12(4) RPBA 2020.
• "Article 12(4) RPBA 2020, second sentence establishes the appellant's obligation to identify any amendment to its case and provide reasons for submitting it in the appeal proceedings. " 
• "The appellant failed to fulfil its obligation under Article 12(4) RPBA 2020, second paragraph. It neither identified the amendment to its case nor provided reasons for submitting it in the appeal proceedings. " 
• The case amendment of the patentee was the new argument that " there was a technical prejudice in the prior art against the combination of the teaching of D1 and D2." 
• In particular, " The skilled person would have derived from D1 that it was essential for good MS and fluorescence signals that the group linking the labelling agent to the glycan be an amino group. As the linking group resulting from the method of D2 was a urea, the skilled person would have expected a loss of the MS signal and possibly also of the fluorescence signal when the method was used on the compounds of D1. According to the appellant, this prejudice was based on the skilled person's common general knowledge" 
• The patentee argues that the argument was based on paragraph [0037] of the patent and common general knowledge.
• Note, the Board does not apply the factors specified in Art. 12(4) for balancing the interests of the parties. 
• The Board also applies Art. 12(6)(s.2) RPBA 2020: " Furthermore, no circumstances justify the filing of the new argument in the appeal proceedings. The argument could and should have been filed in the opposition proceedings since the facts on which it relies were known to the appellant from the outset of the opposition proceedings. This is confirmed by paragraph [0037] of the patent, which hints at a relationship between the electron density on amino and urea groups and their corresponding MS signals." 
• " As this submission could not be justified as a legitimate reaction to late developments in the opposition proceedings and created a new situation on appeal, the board exercised its discretion not to admit the new argument under Article 12(4) and (6) RPBA 2020."
• As a comment, Art. 12(6)(s.2) does not clearly specify a discretion of the Board ("the Board shall not admit..."), but in the ultimate legal basis (Art. 114(2) EPC indeed specifies a discretion of the Boards).

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t200073eu1.html

2. Admittance of a new argument in appeal proceedings

2.1 In the statement of grounds of appeal (paragraphs 24 and 44 to 53), the appellant argued that there was a technical prejudice in the prior art against the combination of the teaching of D1 and D2. The skilled person would have derived from D1 that it was essential for good MS and fluorescence signals that the group linking the labelling agent to the glycan be an amino group. As the linking group resulting from the method of D2 was a urea, the skilled person would have expected a loss of the MS signal and possibly also of the fluorescence signal when the method was used on the compounds of D1. According to the appellant, this prejudice was based on the skilled person's common general knowledge that a urea linking group would impair ionisation efficiency because the electronic density on the nitrogen atom of the urea group would be delocalised and centred on the oxygen atom.

The appellant submitted that this argument was not new; it was just a development of the arguments put forward in the opposition proceedings (reply to the notice of opposition, page 6, section "Technical effect") and was based on the teaching in paragraphs [0037] and [0065] of the patent (see also appellant's letter dated 27 April 2022, section "Introduction-inventive step").

2.2 The respondent requested that the argument not be admitted into the appeal proceedings. As the statement of grounds of appeal was filed after entry into force of the RPBA 2020, the relevant provision for the admittance of the new argument is Article 12(4) and (6) RPBA 2020 (see also Article 25 RPBA 2020).

2.3 In accordance with Article 12(2) RPBA 2020, to which Article 12(4) refers, a party's appeal case must be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. The decision under appeal did not mention at any point the argument that there was a technical prejudice in the prior art deterring the skilled person from combining the teaching of D1 and D2. Nor did the decision refer to a principle in the prior art that the delocalisation of the electronic density on the nitrogen atom of a urea group would impair the MS signal of a compound.

In accordance with Article 12(4) RPBA 2020, first paragraph, the above argument is an amendment to the appellant's case unless the appellant demonstrates that the argument was admissibly raised and maintained in the proceedings leading to the decision under appeal. On this point, the appellant referred to the section "Technical effect" on page 6 of its reply to the notice of opposition. That section explains that D2 does not deal with the issue of the MS signal. However, it is silent on any technical prejudice in the prior art supported by the skilled person's common general knowledge. The argument could also not be found in the section "Obviousness" bridging pages 6 and 7 of the reply to the opposition. There, the appellant argued that the skilled person had no motivation to combine D1 with D2, not that there was a prejudice against that combination of documents. Therefore, the new argument is an amendment to the appellant's case and may be admitted only at the discretion of the board.

Article 12(4) RPBA 2020, second sentence establishes the appellant's obligation to identify any amendment to its case and provide reasons for submitting it in the appeal proceedings. On the admittance of the amendment, Article 12(4) RPBA 2020, third paragraph provides that the board must exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal and the need for procedural economy. Furthermore, Article 12(6) RPBA 2020, second paragraph rules that the board must not admit requests, facts, objections or evidence which should have been submitted in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.

The appellant failed to fulfil its obligation under Article 12(4) RPBA 2020, second paragraph. It neither identified the amendment to its case nor provided reasons for submitting it in the appeal proceedings. Furthermore, no circumstances justify the filing of the new argument in the appeal proceedings. The argument could and should have been filed in the opposition proceedings since the facts on which it relies were known to the appellant from the outset of the opposition proceedings. This is confirmed by paragraph [0037] of the patent, which hints at a relationship between the electron density on amino and urea groups and their corresponding MS signals. However, the appellant did not raise this issue during the opposition proceedings and brought it up for the first time in appeal.

As this submission could not be justified as a legitimate reaction to late developments in the opposition proceedings and created a new situation on appeal, the board exercised its discretion not to admit the new argument under Article 12(4) and (6) RPBA 2020.