T 0239/20 - (I) Complete appeal case

Key points

• The OD finds the operative claim to be novel over the asserted public prior use by two features of the claim. The opponent addresses those features in its Statement of grounds.
• " the patent proprietor argued [...] that the appeal case of the opponent was not complete with respect to the lack of novelty of the subject-matter of claim 1 in view of Triumph and had to be held as inadmissible. In particular, the statement of grounds of appeal of the opponent addressed only the features of claim 1 which the Opposition Division found as not being disclosed by Triumph. However, for an appeal to be successful, it was not sufficient to identify where the department of first instance incurred an error of judgement. The appellant had also in line with Article 12(3) RPBA 2020 to set out the facts, evidence and arguments why the decision under appeal must be reversed. Accordingly, the opponent had also to specify where all remaining features of claim 1 were disclosed by the child car seat Triumph in order for the outcome of the decision to be reversed."  (according to patentee)
• "Article 12(3) RPBA 2020 stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on" 
• The Board: "The opponent in the statement of grounds of appeal contested the decision of the Opposition Division in this regard and indicated the reasons why the findings of the Opposition Division were not correct and the decision under appeal should be amended (see points [100] to [170] of the statement of grounds of appeal of the opponent). Consequently, the statement of grounds of appeal of the opponent fulfills the requirements set out under [...] Article 12(3) RPBA 2020, since the Opposition Division did not explicitly reason which other features the car seat Triumph did not disclose. Accordingly, the novelty objection over Triumph is part of the contested decision and also part of the current appeal proceedings because the opponent challenges the decision in that respect." 
• " If the patent proprietor further were to contest in view of the statement of grounds of appeal of the opponent that other features of claim 1 than those identified in the impugned decision were not disclosed by Triumph, these alleged facts belong to the patent proprietor's complete appeal case and should accordingly be expressly specified in the reply to the statement of grounds of appeal of the opponent." 
• For what seems to be the opposite approach, see T 2253/16, r.2.5.4 where the opponent/appellant had only engaged with the distinguishing feature identified by the opposition division. The attack was inadmissible under Art. 12(3) RPBA 2020. "Es fehlt vielmehr eine Analyse des Dokuments D4, aus der hervorgeht, wo die Beschwerdeführerin welche Anspruchsmerkmale offenbart sieht." (i.e. a complete analysis of how D4 taught all features of the claim was required by the Board in that case.)
  
• As a comment, in the present decision T 0239/20, the OD only identified the distinguishing features in the decision (here, p. 17) and did not spell out in the decision how the device of the public prior use disclosed the other features of the claim. 

EPO 

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/t200239eu1.html

10. Novelty in view of public prior use Triumph - Article 54 EPC

10.1 Opponent appeal case on novelty

10.1.1 The case of the opponent/appellant as regards the novelty attack against the subject-matter of claim 1 over the public prior use Triumph is complete and consequently part of the appeal proceedings (Article 12(3) and (5) RPBA 2020).

10.1.2 With letter of 14 April 2022 the patent proprietor argued for the first time that the appeal case of the opponent was not complete with respect to the lack of novelty of the subject-matter of claim 1 in view of Triumph and had to be held as inadmissible. In particular, the statement of grounds of appeal of the opponent addressed only the features of claim 1 which the Opposition Division found as not being disclosed by Triumph. However, for an appeal to be successful, it was not sufficient to identify where the department of first instance incurred an error of judgement. The appellant had also in line with Article 12(3) RPBA 2020 to set out the facts, evidence and arguments why the decision under appeal must be reversed. Accordingly, the opponent had also to specify where all remaining features of claim 1 were disclosed by the child car seat Triumph in order for the outcome of the decision to be reversed.

10.1.3 According to Rule 99(2) EPC the appellant shall indicate in the statement of grounds of appeal the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. Further, Article 12(3) RPBA 2020 stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on.

10.1.4 In the present case the Opposition Division decided that the car seat Triumph did not anticipate a car seat according to claim 1 because it did not disclose the following features of claim 1:

(a) "said shoulder straps ... being positionable ... to permit said harness to be stored in said harness storage cavity with said shoulder straps ... projecting out of said harness storage cavity ... "; and

(b) "said harness storage cavity is formed with slots to permit the passage of said shoulder straps ... from said harness storage cavity when said cover is closed and said harness buckle and said latch members are positioned within said harness storage cavity".

The opponent in the statement of grounds of appeal contested the decision of the Opposition Division in this regard and indicated the reasons why the findings of the Opposition Division were not correct and the decision under appeal should be amended (see points [100] to [170] of the statement of grounds of appeal of the opponent). Consequently, the statement of grounds of appeal of the opponent fulfills the requirements set out under Rule 99(2) EPC and Article 12(3) RPBA 2020, since the Opposition Division did not explicitly reason which other features the car seat Triumph did not disclose. Accordingly, the novelty objection over Triumph is part of the contested decision and also part of the current appeal proceedings because the opponent challenges the decision in that respect. If the patent proprietor further were to contest in view of the statement of grounds of appeal of the opponent that other features of claim 1 than those identified in the impugned decision were not disclosed by Triumph, these alleged facts belong to the patent proprietor's complete appeal case and should accordingly be expressly specified in the reply to the statement of grounds of appeal of the opponent.

10.1.5 The Board consequently has no discretion to hold inadmissible the novelty attack for the subject-matter of claim 1 in view of Triumph, since according to Article 12(5) RPBA 2020 the Board disposes of that discretion only if that part of the submission of the opponent does not meet the requirements of Article 12(3) RPBA 2020.

10.1.6 The objection of the opponent regarding the admissibility of the objection of non-admissibility of the novelty attack over the public prior use Triumph under Article 13(2) RPBA 2020 as representing a late filed change of case of the patent proprietor can be left aside since the novelty attack forms part of the appeal proceedings.