T 2395/19 - Review of facts, public prior use

Key points

• An example of the new style review of findings of facts, by Board 3.2.01.
• "The Board confirms the conclusion of the opposition division that the appellant (opponent) has convincingly and sufficiently proven that a public prior use of a coated cutting tool type "Tiger-Tec WAK1O" manufactured by Walter AG took place before the priority date of the contested patent (December 2004). 
• "To the extent that there is no error in the application of law, in principle a Board has no reason to set aside the evaluation of evidence of a deciding body of the first instance and supersede it by its own unless the deciding body of first instance recognizably failed to consider essential aspects, included irrelevant considerations, or violated the rules of logic, such as when logical errors and contradictions are detected by the Board in the reasoning of the decision (see also T1418/17, point 1.3 of the Reasons, T 42/19, point 3.4 of the Reasons)."
• " The burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous (T 1138/20, point 1.2.5 of the Reasons)."
• On the standard of proof: "The Board also considers that it has been proved beyond any reasonable doubt (see affidavits D26, D26a and D49) that coated cutting tools of type "Tiger tec" with grades WAKl0 manufactured by Walter AG were available on the market as a "mass product" to everyone - hence also to the appellant (patent proprietor) - at least from July 2004, i.e. before the priority date of the contested patent (December 2004)."
• The fact that the specific test specimen was tested in house, does not raise the standard of proof to "up to the hilt".
• "It appears to be normal that a party submits their own experimental data be it produced within their company or an affiliate company. This may lead to a need of the other party to run comparative tests and submit the results if they shed doubt on the other party's data. But it does not lead to a shift of the standard of proof since both parties are free to run their own tests on standard products available on the market. Should the other party contest the comparative results based on the fact that material properties may change within a series of products they would be under an obligation to provide a specimen out of the toolbox acquired by them for further inspection by the other party or by an expert appointed by the opposition division. "
• This is the EPO-appointed expert of Art. 117(1)(e) EPC. Does anyone know of a case (appeal or application number) where one was appointed? (asking for study and teaching purposes)
• "The credibility of the declaration signed by the employees of TaeguTec was questioned by the appellant (patent proprietor) ..."
• As a comment, if signed declarations are timely (contested before the OD (in a substantiated way), the declarant should normally be offered as a witness by the party filing the declarations. The decision indicates that the opponent did offer witnesses. 
• "As a consequence of these findings, the taking of evidence in the form of a hearing of the witnesses Mr. Na and Mr. Lee offered by the appellant (opponent) was not required." (by the OD)
• E-IV, 1.2: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony." (see also T0474/04)
• 
  
• "The complaint of the appellant (patent proprietor) that they were not able to carry out counter-tests of the same specimens tested by Mr. Lee and Mr. Na is not justified either because, as confirmed by the appellant (opponent), no request in this sense was submitted by the appellant (patent proprietor) to the appellant (opponent) and the contrary has not been proven by the appellant (patent proprietor). The Board also observes that the appellant (patent proprietor) did not make any attempt to purchase and counter-test specimens of "Tiger-tec WAK1O" coated cutting tools which were available on the market at least as from the year 2024 in order to confute the results presented in the affidavits under discussion."
• The Board considers and rejects numerous other objections to the evidence by the proprietor.
• "The subject-matter of claim 1 according to the main and to the auxiliary request 1 thus lacks novelty over the public prior use, whereby irrespective of the further issues raised by the appellant (opponent) these requests are not allowable as correctly stated by the opposition division."
• The patent is maintained in amended form: "The Board agrees with the appellant (opponent) that the solution recited in claim 1 defines an alternative to the known "Tiger-tec WAK1O" coated cutting tool because the advantageous technical effect claimed by the appellant (patent proprietor) is neither mentioned in the contested patent nor was this technical effect demonstrated by the appellant (patent proprietor). However, the Board considers that the elevate number of parameters at stake and the complexity of their interactions which, as it is well known, characterizes this kind of composite products, suggests to the person skilled in the art to apply extreme caution when considering to replace a component of a very well working composite material as the coatings of the "Tiger-tec WAK1O" cutting tool with a different one. Therefore, the Board agrees with the appellant (patent proprietor) that the person skilled in the art has no motivation to replace the material of the third coating of the public prior use cutting tool with the materials suggested in claim 1, whereby the subject-matter of claim 1 results in an non-obvious alternative to the solution known from the prior art."

EPO 

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

T 1776/18 - (I) Amended claims are facts (?)

Key points

•  Board 3.3.09 gives an analysis of the legal basis in the EPC for holding amended claims inadmissible. The two main candidates are Article 114(2) and Article 123(1) EPC. 
• The facts of the case are that the OD held auxiliary request 4A inadmissible that was filed during the oral proceedings, in reply to a novelty attack based on D6. The Board has to review this decision of the OD. The Board ultimately approves of it. In doing so, it must deal with Rule 116(2) EPC and T 754/16 which found that "requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent".
• The patentee argues that:  "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. Under these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."  
• The Board: " The Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will firstly assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. Secondly, it will be analysed whether the concept of "not submitted in due time" in Article 114(2) EPC relates to fixed criteria such as a certain point in time in the proceedings or, as alleged by the patent proprietor, to relative criteria such as individual procedural developments. Thirdly, it will be assessed whether Rule 116(2) EPC should, as alleged by the patent proprietor with reference to T 754/16, be understood as making the exercise of the Opposition Division's discretionary power subject to conditions other than that the amended claim request was not submitted in due time. Fourthly, the Opposition Division's way of exercising its discretion will be reviewed." 
   
• Board 3.2.01 explained that the legal basis is Article 123(1) EPC in T 0966/17, for the opposition division in conjunction with R.79(1) and R.81(3). In the petition for review case R 6/19, the same conclusion was arrived at.
•  It may be added that landmark decision T 0406/86 concluded that R.79(1) and R.81(3) [strictly speaking their predecessors in EPC 1973] provide the legal basis for holding claim amendments inadmissible in opposition (see my post on that decision). The legal basis was identified in T 406/86 as Art. 101(2) EPC 1973 which provides that: "[i]n the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations"; essentially the same provision can be found in Art. 101(2).
• However, as described in CLBA 2022 IV.C.5.1.4.a, "In many decisions the boards have relied on Art. 114(2) EPC " for holding amended claims inadmissible.
• As noted above, "the Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will [first] assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. 
• Implicitly, the Board may have considered that the OD's decision to hold the amended claims inadmissible could not be supported by Article 123(1) as ultimate  legal basis; or the Board had to qualify amended claims as fact in order to rely on Rule 116(1) EPC.
• "There is a long line of case law (e.g. T 171/03, Reasons 5; T 811/08, Reasons 4.2; T 1100/10, Reasons 8 and 11; T 1933/12, Reasons 4.1; T 2385/12, Reasons 1.8; T 108/14, Reasons 3; and T 44/17, Reasons 2) according to which claim requests may be disregarded under Article 114(2) EPC. "
• "There is also an alternative view. ... The Enlarged Board deduced ... that the first sentence of Article 123(1) EPC provided a legal basis for the EPO's discretion as to whether or not to admit claim requests. It left open whether or not Article 114(2) EPC constituted such a legal basis as well (R 6/19, Reasons 5 to 11; cf. also T 966/17, Reasons 2.2.1). " 
• See also J 14/19, reasons 1.6.
• The Board then turns to T 1914/12 because Article 114(2) is limited to facts (and evidence), so the question is whether amended claims are facts in the sense of that provision. "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. "
• The present Board concludes that amended claims are facts in the sense of Article 114(2), such that Article 114(2) provides a basis for holding amended claims inadmissible. In order to arrive at this conclusion, the Board rebuts the reasoning in T 1914/12, first summarizing that reasoning as follows: "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. This is reasoned by references to previous decisions, namely to T 912/91, [...] However, all of these decisions are concerned with a very specific question, namely the question of whether Article 113(1) EPC and [G 4/92] prevent a Board from deciding on the maintenance of a patent on the basis of auxiliary requests made during oral proceedings in which the opponent was absent. "
• G 4/92 held that "A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings [and that are exceptionally admitted into the proceedings]" (hn.1), the opinion is limited to inter partes proceedings in that it has "no bearing" on ex parte proceedings (r.1) The Enlarged Board indicated that the same principle applies to evidence (hn.2) but not to arguments (r.10) as these do not constitute grounds or evidence under Article 113(1). The opinion is silent on amended claims.
• The present Board states that it "is of the view that in particular the statements in T 912/91 and T 133/92 that the submission of auxiliary requests is not a fact "within the meaning of the above decision" (i.e. opinion G 4/92) cannot be generalised."
• This may imply that according to the present Board, the EPC has two concepts of 'fact'. 
• "For the purposes of Article 114(2) EPC, the present Board thus considers a patent claim to be a statement of technical facts in legal terms. This is also apparent in claim interpretation. While determining the subject-matter of a patent claim is overall a question of law, it also involves questions of fact, such as the meaning of a certain technical term at a certain point in time."
• As a comment, claim interpretation seems to be rather different in nature than submitting amended claims. The Board decides on the claim interpretation, but filing amended claims is the prerogative of the patentee (or applicant) under Article 113(2).
• I find the Board's reasoning difficult to follow at this point. A patent claim (if written customarily) is not a statement that can be true or false.
  
• Jumping from r.4.5.5 to r.4.5.8 of the Board's extensive reasoning: "[a] teleological interpretation of Article 114(2) EPC supports the understanding that substantiated claim amendments are facts within the meaning of this provision. The purpose of Article 114(2) EPC is to provide the deciding body with an effective means to prevent parties from unnecessarily protracting the proceedings. ...  Moreover, as to whether a late-filed submission may unnecessarily protract the proceedings, there is no principal difference between objections submitted by an opponent and amended claim requests submitted by a patent proprietor. Applying Article 114(2) EPC to both types of party submissions thus also ensures that the parties are treated equally and according to the same criteria, which guarantees equality of arms."
• As a comment, Article 114(2) EPC refers neither to objections nor to requests but to facts and evidence. 
• The Board: "As to Article 123(1) EPC as a possible legal basis for not admitting claim requests, it does not seem straightforward that the first sentence of this provision is concerned with any discretionary power conferred to the EPO. "
• The key part of Article 123(1) seems to be that: "The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations."
• " Rule 81(3) EPC as such does not appear to confer any discretionary power to the EPO either; rather, it concerns certain non-mandatory ("where necessary") contents of a communication of an Opposition Division under Article 101(1) EPC. Moreover, the requirement for a submission to not have been "submitted in due time" as a precondition for the exercise of discretion by the EPO only exists under Article 114(2) EPC, and not under Article 123(1) EPC. "
• As to the first sentence, I think this was already addressed by T 406/86:  “Although Rules 57 and 58 EPC [1973] directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments [i.e. auxiliary requests] to be allowed [i.e. admitted] only if it [=the OD] decides after exercising due discretion that it [=the OD] regards them as appropriate and/or necessary in the above sense. " (see also T 0295/87 (link)).
• As a further comment, an advantage of Article 123(1) EPC is that the Administrative Council can clarify the Implementing Regulations if it wishes. 
• As to the Board's second sentence, under Rule 80 EPC amended claims can be held inadmissible even if not filed late. 
• Of note, at the time of T 406/86, Rule 80 EPC did not yet exist. It was introduced in 1995, see OJ 1995, p.409.

• "Moreover, even if one were of the opinion that a patent claim as such does not qualify as "facts or evidence" within the meaning of Article 114(2) EPC, an amended claim request must be substantiated in order to become effective (see, for example, T 1732/10, [...]). Unsubstantiated claim requests are not considered validly filed and do not form part of the proceedings (T 1784/14, Reasons 3.7). "
• Unless the purpose of the amendments is self-evident, as the Board notes. The Board considers self-evident amendments to be a case of implicit substantiation.
• "In conclusion, in submissions containing claim requests which are explicitly or implicitly substantiated, factual elements are present. The presence of these factual elements allows Article 114(2) EPC to be relied on as a legal basis for disregarding claim requests which are not filed in due time (see J 14/19, Reasons 1.6 and 1.7)."
• The substantiation of amended claims may involve factual assertions in certain cases. Still, the prudent approach seems to be considering this on a case-by-case basis and identifying the precise factual assertions of the patentee when holding amended claims inadmissible on this ground. 
• The Board then has to deal with the issue of whether amended claims must actually be substantiated in the first instance proceedings. "Most of the case law on the need to substantiate claim requests concerns claim amendments submitted in appeal proceedings, and in these cases reference is often made to Article 12(2) RPBA 2007 (cf. Article 12(3) RPBA 2020). While this provision is not applicable in opposition proceedings, the principle that a party must contribute to the conduct of the proceedings by substantiating its own requests in a minimum way is not limited to appeal proceedings. This can in particular be deduced from Rule 76(2)(c) EPC, according to which an opponent requesting the revocation of a patent must also provide substantiation for at least one ground of opposition".
• Note, Rule 76(2)(c) EPC is about the opposition and not about claim requests.
• The Board, under r. 4.5.6: "In view of Rule 80 EPC, according to which an amended claim request must be occasioned by a ground for opposition, a claim request must be substantiated by submitting why the amendment is suitable for overcoming one or more grounds of opposition. "
• Rule 80 EPC indeed appears to be a plausible legal basis for the requirement to substantiate claim amendments in opposition. I note that Rule 80 is generally considered to be based on Article 123(1) EPC and/or Article 101(2) EPC.

I will discuss the Board's further reasoning in a later post.

• EPO 

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

T 2702/18 - Prior use and tacit secrecy

 Key points

• The Board concludes, in the translated headnote, that a relationship of confidentiality between suppliers and customers in the vehicle industry is the be assumed as customary, which prohibits as a matter of commercial practice, suppliers from sharing with third parties any trade secrets of customers that they get access to in the framework of cooperation with these customers. However, assuming a more extensive tacit secrecy agreement based on the facts of the case assumes that both parties had a corresponding wish to be legally bound and that they implicitly express that the joint development would not be made public, as long as a common interest in secrecy existed (thereby following T830/90).
• I think a lot can be said about this headnote and the board divulging or promulgating this commercial practice, but that is perhaps something for the future. 
• In the case at hand, the opposition was based on prior use. It seems* (from the decision of the Board) that the invention was made by the supplier and shared with the customer and that the opposed patent was granted from a patent application filed by the customer. The Board concludes that the supplier was not bound by secrecy to the customer and that, therefore, there was a public prior use.
• As a comment, I'm not sure if the Board's reasoning is conclusive. Typically, the inventor itself uses the invention prior to the filing of the patent (application e.g. building prototype, lab experiments) and in principle, an inventor is not bound by secrecy (let's assume the simple case of a self-employed inventor in his/her/their garage; mutatis mutandis for engineers and scientists working for a company). Typically these activities of the inventor itself do not constitute a novelty destroying public prior use (in my view). In the case at hand, the supplier (seemingly*) developed the invention and shared the inventive concept with the customer i.e. disclosed the invention to the prospective customer. As to whether that disclosure constitutes prior art, the question appears to be whether the customer was bound by a (tacit) secrecy agreement. 
• * Note; I'm not opining on entitlement in any way; the marked wording tries to summarize para. 3.1.2 and 3.1.3 of the decision. 
• "Die für ACE [=supplier] geltende Geheimhaltungsverpflichtung aus dem Handelsbrauch betreffend die fremden Betriebsgeheimnisse von Dynapac [=customer] erstreckt sich daher nicht auf beanspruchte Merkmale der vorliegend geltend gemachten Erfindung. Diese waren vielmehr... eigenes Wissen von ACE [ supplier]."
  
  
• Headnote 3 in translation is: "The assumption of an actual presumption that the partners in a joint further development in the field of vehicle construction, in case of doubt, want to undertake binding mutual secrecy up to the publication of the developed product, presupposes as connecting facts at least the determination of the awareness that it is a joint development of both partner acts, and that both sides will be interested in secrecy."

• As to whether the decision involves a review of facts: in translation: “ 3.3.1 Since the board does not question the facts established by the opposition division, but only the legal conclusions drawn from them, the limitation of the assessment of evidence, which is, according to the case-law [*] of the board, equivalent to that of discretionary decisions (as laid down by the Enlarged Board of Appeal in G 7/93, reasons no. 2.6), not decisive in the present case. The principles set out in decision T 1418/17 are therefore not relevant here and the delimitation from decision T 1604/16 does not need to be discussed in more detail. 3.3.2 In summary, in the present case it is not a question of reviewing the evidence assessment by the opposition division and, if necessary, replacing it with another evidence assessment carried out by the board, but rather of drawing the correct legal conclusions from the facts of prior use established by the evidence assessment. The facts ascertained by the opposition division in this respect were also not called into question by the parties involved in the appeal proceedings, so that a review of the assessment of the evidence does not appear to be necessary for this reason either.”
• As a comment, it is not clear to me if the above means that the point if submitted late in the appeal proceedings, could not have been held inadmissible under Article 114(2) EPC.
• [*] The Board does not cite any case law in particular, G7/93 r.2.6 is not about the assessment of evidence.

T 2702/18 

https://www.epo.org/law-practice/case-law-appeals/recent/t182702du1.html

Entscheidungsgründe

Hauptantrag

1. Der Hauptantrag entspricht der Fassung des Streitpatents, die im Einspruchsverfahren als ,,Hilfsantrag 1" bezeichnet wurde und gemäß der angegriffenen Entscheidung der Einspruchsabteilung den Erfordernissen des EPÜ genügte.

Vorbenutzung

2. Die Beschwerdeführerin machte bereits im Einspruchsverfahren die folgende offenkundige Vorbenutzung geltend:

2.1 Die Firma Dynapac GmbH hatte sich seinerzeit an die Firma ACE Stoßdämpfer GmbH gewandt und um ein Angebot für einen hydraulischen Stoßdämpfer gebeten. Ein Vertriebsmitarbeiter von ACE besuchte daraufhin am 20.4.2011 die Produktionsstätten von Dynapac und stellte fest, dass das von Dynapac angefragte Produkt nicht wie vorgesehen an dem von Dynapac hergestellten Straßenfertiger verwendet werden kann.

T 2988/18 - Arguments pertaining to the interpretation of law

 Key points

• The Board indicates that it concurs with the view that “Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings”, following  T 247/20.
• The patentee's argument based on G1/93 regarding Article 123(2) is such an argument.
• “The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.”

https://www.epo.org/law-practice/case-law-appeals/recent/t182988eu1.html

Reasons for the Decision

1. Admission of late filed arguments

1.1 In its submissions dated 26 March 2021 the appellant presented two arguments to meet the objection that the amendment to claim 1 of the main request, whereby the amounts of uncrosslinked hyaluronic acids were amounts expressed in percent "by volume", did not comply with Article 123(2) EPC. The first one was that this amendment did not add new technical teaching. The second was that even if the feature was not derivable from the application as filed it would nevertheless comply with Article 123(2) EPC in view of decision G 1/93. It is this second argument that was objected to by the respondent 01. Respondent 01 requested that it was not admitted into the proceedings.

1.2 In the present case the Board issued the summons to oral proceedings in July 2020. Notification of the summons occurred before the appellant filed its argument based on G 1/93. This means that Article 13(2) RPBA 2020 is relevant (Article 25(3) RPBA 2020). That provision suggests that: "Any amendment to a party's appeal case made...after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."

The Board concurs with the interpretation of Article 13(2) EPC given in decision T 247/20 (Reasons 1.3) as summarised below.

The test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to (the argument based on G 1/93) is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.

An amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal or its reply. In other words: it goes beyond the framework established therein. As there was no argument based on G 1/93 in the statement of grounds of appeal the question arises whether this argument is an amendment to the appellant's appeal case. The Board considers that it is not for the reasons set out below.

1.3 There is no definition of the term "argument" in the RPBA 2020. In G 4/92 the Enlarged Board contrasted arguments to grounds or evidence and suggested that arguments "are reasons based on the facts and evidence which have already been put forward" (Reasons 10). This leaves open the question whether the type of argument made by the appellant, namely one where the Enlarged Board interpreted Article 123(2) EPC (the argument based on G 1/93), also falls under the ambit of Article 13(2) RPBA 2020.

1.4 Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings (see e.g. for German nullity proceedings Hall/Nobbe in Benkard, PatG, 11**(th) edition, § 83 Rz. 14 and Voit in Schulte, Patentgesetz mit EPÜ, 10**(th) edition, § 83 PatG, Rz. 20, for German civil proceedings Saenger, Zivilprozessordnung, Nomos, 8**(th) edition, § 282, Rz.12; for English civil proceedings Pittalis v Grant [1989 QB 605], at p.611). This has been recognised in the explanatory remarks to the RPBA 2020 according to which submissions of a party which concern the interpretation of law are not an amendment (Supplementary publication 1, OJ EPO 2020, p.218). The Board concurs with this view.

Respondent 01 submitted that the argument based on G 1/93 was not limited to a reference to the case law, but that a new argument had been developed on the basis of this case law. This constituted a new line of argument which amounted to an amendment to the appellant's appeal case. The Board is not convinced. The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.

T 0879/18 - New objection is new fact

Key points

• The OD decided to not admit AR-1 reasoning that “The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible”. 
•  However, the opponent had raised a new objection based on a new claim interpretation during the oral proceedings before the OD and the patentee had filed the request in response to that objection.
• The Board: “In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend.” (emphasis added).
• The AR was an appropriate response to the new objection.
• “Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection” and the request is admitted.
• 
  

T 0879/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180879eu1.html

3. Auxiliary request 1, admittance, Article 12(4) RPBA with Article 114(2) EPC

3.1 The opposition division decided (see impugned decision, reasons, point 14) to exercise its discretion under Article 114(2) EPC by not admitting this request into the opposition proceedings.

3.2 According to settled jurisprudence of the Boards of appeal (see CLBA IV.C.4.5.2, and the cited decisions, for example T0640/91, headnote III and reasons, 6.3) a board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way.

3.3 In the impugned decision (see reasons, point 14), the opposition division reasoned this point as follows:

"P [The proprietor] argued that this new MR [main request] was filed in response to the new argument relating to the definition of an array.

The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible in accordance with Article 114(2) EPC".

3.4 It appears to the Board that the new argument referred to by the opposition division was a new interpretation of the term "array" submitted in connection with a new lack of novelty objection against the current main request with respect to D5 and D13 (see the minutes, points 8 and 13). This objection based on a new interpretation was first raised by the opponent at the oral proceedings, as acknowledged by the appellant opponent at the oral proceedings before the Board. Indeed, neither the summons of 19 July 2017 nor the opponent's subsequent submission dated 23 November 2017 which deal with this request (filed as 2nd auxiliary request with letter of 9 March 2017) mention novelty vis-a-vis D5 or D13 or the new interpretation of the term "array".

3.5 In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend. That they did so by adding detail from the description to clarify the meaning of the term "array" in order to delimit the claimed subject-matter from the cited prior art appears an appropriate response, that could be expected.

3.6 Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection.

3.7 Therefore, the Board decided to admit the first auxiliary request into the appeal proceedings.

T 1217/17 - Don't focus in your appeal reply brief

 Key points

• In this opposition appeal, the Board reverses the finding of the OD and concludes that claim 1 is not obvious starting from brochure D5. The opponent then wishes to present new inventive step attacks during the oral proceedings. The admissibility is discussed for more than one hour (point 7) and none of the attacks is admitted.
• The inventive step attacks based on D1-D4 and D6 as well as D1+D5 are not admitted because the opponent as respondent had merely referred to the submissions in the first instance proceedings in its Appeal Reply Brief (note, the patent was revoked by the OD). Moreover, the first instance submissions lacked detailed reasoning on this point. 
• "Damit überließ die Beschwerdegegnerin es ganz der Kammer und der Beschwerdeführerin herauszufinden, inwiefern und aus welchen Gründen die erfinderische Tätigkeit des Gegenstands des Anspruchs 1 im Hinblick auf den technischen Inhalt dieser Entgegenhaltungen in Frage gestellt werden soll. Im Einklang mit ständiger Rechtsprechung der Beschwerdekammern, vertritt die Kammer die Auffassung, dass sich ein Beteiligter nicht darauf beschränken kann, ein Konvolut von Dokumenten vorzulegen ohne substantiiert vorzutragen, welche Tatsachen durch welche konkreten Passagen oder Figuren dieser Dokumente belegt werden sollen."
• Opponent's argument that no detailed inventive step arguments regarding these further attacks were necessary because the OD had revoked the patent based on D5, does not convince the Board. Article 12(2) RPBA 2007 requires substantiation of all inventive step attacks to be possibly ('ggf.' in the German text) made in the appeal proceedings, already in the Appeal Reply  Brief (in case of the opponent as respondent, I add) (see also r.6.7 and 6.8 of the decision).
• The attacks based on prior use P3 and P4 are not admitted as lacking substantiation.
• Apparently, the opponent announced a speech on these inventive step attacks during the oral proceedings, and this speech was not admitted (as I understand it, before the speech was given). Opponent protested that the speech did not involve new submissions but only the elaboration of arguments based on documents already in the file.
• "Die [opponent] argumentiert zum einen, dass es sich bei dem angekündigten Vortrag um kein neues Beschwerdevorbringen im Sinne des Artikels 13(1) VOBK 2020 handele, sondern um eine in jeder Phase des Beschwerdeverfahrens zulässige Weiterentwicklung von in der Beschwerdeerwiderung bereits erwähnten Argumenten, die sich auf im Verfahren befindliche Entgegenhaltungen stützen."
• About why the announced speech would involve new facts: "Die Kammer vertritt die Auffassung, dass es sich bei den angekündigten, vorzutragenden Ausführungen nicht lediglich um neuen "Argumente" handelt, sonder auch um neue relevante "Tatsachen", wie z.B. die in der Beschwerdeerwiderung fehlende Merkmalanalyse, sowie die Angabe der konkreten Passagen in den oben genannten Beweismittel, die die von der Beschwerdegegnerin als bekannt betrachteten Merkmale des Anspruchs 1 vorwegnehmen."
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EPO T 1217/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171217du1.html

3.4 Ausgehend von der Vorrichtung der Broschüre D5 und im Hinblick auf die oben genannten, zusätzlichen unterscheidenden Merkmale, stimmt die Kammer grundsätzlich der von der Beschwerdeführerin in der Beschwerdebegründung ausgeführten Aufgabestellung zu, nämlich:

den gleichzeitigen und gleichmäßigen Auftrag von Aromastoffen auf mehreren Tabaksträngen einer Mehrstrangzigarettenmaschine zu gewährleisten.

3.5 In Abweichung von der Schlussfolgerung der Einspruchsabteilung in der angefochtenen Entscheidung schließt sich die Kammer der Auffassung der Beschwerdeführerin an, dass die im Anspruch 1 zur Lösung der oben genannten Aufgabe vorgeschlagene Lösung auf einer erfinderischen Tätigkeit im Sinne der Artikel 52(1) und 56 EPÜ beruht.

Selbst wenn, im Einklang mit der Begründung der Einspruchsabteilung, eine Vervielfachung des bekannten Dosiersystems zum Zweck eines gleichzeitigen Auftrags von Aromastoffen auf mehreren Tabaksträngen als eine naheliegende Weiterbildung der bekannten einsträngigen Vorrichtung angesehen werden könnte, besteht für den Fachmann keine Anregung, die außerhalb des Regelkreises angeordnete, ungeregelte Konstantpumpe der Vorrichtung der D5 durch eine Verstellpumpe zu ersetzen, die Teil des Dosiersystems ist. Eine solche Modifizierung würde außerdem komplexe Anpassungen der Steuerungseinrichtung sowie ein Verzichten auf die regelbare Drosselanordnung voraussetzen, was jeweils nicht als naheliegend angesehen werden kann. Die Argumentation der Beschwerdegegnerin, die im Wesentlichen auf der sich vom technischen Inhalt der Broschüre D5 unterscheidenden, mehrstrangigen Ausführung der Dosiersysteme basiert und ergänzend darauf verweist, dass die Auswahl eine Verstellpumpe anstatt einer Konstantpumpe für den Fachmann naheliegend sei, ist somit nicht überzeugend.

Weitere Angrifflinien unter Artikel 56 EPÜ basierend auf D1 in Kombination mit D5, D1-D4, D6 sowie auf P3 und P4 - Vortrag in der Beschwerdeerwiderung

4. Im Laufe der mündliche Verhandlung kündigte die Beschwerdegegnerin an, dass sie, als Reaktion auf die oben ausgeführte Schlussfolgerung der Kammer, weitere Angrifflinien basierend auf den Dokumenten D1-D4 und D6, insbesondere auf der Kombination von D1 mit D5, sowie auf den offenkundigen Vorbenutzungen P3 und P4 vortragen wolle. Die Beschwerdeführerin trat der Berücksichtigung eines auf diesen Angrifflinien basierenden Vortrags entgegen mit der Begründung, dass sie in der Beschwerdeerwiderung entweder nicht ausreichend oder gar nicht substantiiert sind.

T 1604/16 - Appellate review of findings of fact (II)

 Key points

• The present Board in five-member composition thoroughly rebuts T 1418/17 about what is the standard of review of factual findings at the Boards of appeal. 
• “The [other] board in T 1418/17 held that a board should only overrule a finding of fact made by the department of first instance if that department's evaluation of the evidence had one of the following shortcomings: essential points had not been considered, irrelevant matters had been taken into consideration or illogical conclusions had been drawn”
• “The Board in the case in hand deems it necessary to consider whether, when reviewing the Opposition Division's finding of fact, it should limit itself to identifying whether or not one of the criteria set out in T 1418/17 has been met”
• “With respect to the criteria set out in T 1418/17, the Board notes that the principle of the free evaluation of evidence applies to all types of evidence adduced, including documentary evidence, expert opinions and statements made by the parties. It is the Board's view that [the principle of the free evaluation of evidence ] has no direct bearing on the extent of the boards' competence for reviewing decisions in general , and particularly findings of fact made by a department of first instance.” [note: contrary to the reasoning in T 1418/17] 
• “If the criteria set out in T 1418/17 were applied so broadly, this would amount to a considerable restriction of a board's competence. This kind of restriction may well be found in some national jurisdictions where the last judicial instance only reviews questions of law and the review of findings of fact is very limited. If there are several instances of judicial review, legislators might limit the second or further instance's power of review. However, there is no basis in the EPC or established case law for such a broad restriction of the boards' competence.”
• “ On the contrary, the boards have competence to review appealed decisions in full, including points of law and fact (see e.g. explanatory remarks to new paragraph 2 of Article 12 of the Rules of Procedure of the Boards of Appeal, OJ Suppl. 2/2020). This is in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office (regarding Article 6 ECHR, see e.g. Guide on Article 6 of the European Convention on Human Rights, Council of Europe/European Court of Human Rights 2013, paragraph 84).” (emphasis added).
• This reasoning makes sense to me. It may be added that a Board of appeal comprises two technical members, such that the technical expertise of the first instance department is not a ground for deference to its factual findings.
• “In view of the above the Board in this case does not see any reason why it should limit its review of the Opposition Division's findings of fact made in the context of the public prior use by applying the criteria set out in decision T 1418/17”
  
  
• Turning to the evidence at hand: “Under these circumstances, the evidence produced is not enough to convince the Board that the ramp depicted in the photographs in E1/1 was made available to the public before the filing date of the patent, in particular on the day Ms M's car was delivered according to E1. Hence, the Opposition Division erred in concluding that the ramp shown in E1/1 formed part of the prior art.”
  
  
• On the hearing of witnesses in general, in particular the need for a 'direct impression': 
  “When hearing a witness, the competent body (here the Opposition Division) has a number of ways of scrutinising the reliability of the witness testimony (a summary is given in T 474/04, reasons 8). Issues such as whether the testimony of the witness is based on their own observations or on information from others, or whether the witness was able to observe what they claim to have observed can be addressed in the form of questions answered by the witness. The questions and answers are then reflected in the minutes. There are also issues concerning the credibility of the witness themselves, that is whether the witness is telling the truth. This depends not only on what the witness says, but also on their body language, facial expressions etc. during the hearing. The direct impression that the witness may give is a matter which can only be assessed by the competent body hearing the witness.

EPO Headnote

The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

EPO T 1604/16  -  link

Summary of Facts and Submissions

I. The patent proprietor has appealed against the Opposition Division's decision, posted on 1 March 2016, that, account being taken of the amendments according to auxiliary request 5 then on file, European patent No. 2 293 755 and the invention to which it related met the requirements of the EPC.

II. The patent was opposed on the grounds of lack of novelty, lack of inventive step, insufficient disclosure and added subject-matter.

By letter dated 13 August 2012 the opponent dropped the objection based on the ground of added subject-matter.

III. The Opposition Division held that the ground for opposition of insufficient disclosure did not prejudice the maintenance of the patent as granted.

The Opposition Division found that the subject-matter of claim 1 of the patent as granted lacked novelty over a public prior use based on the witness evidence of Ms M taken before the Opposition Division and the following documents:

E1: Invoice No. 2730463 from the company MobiTEC Sonderfahrzeugtechnik to Ms [M], dated 4 July 2007

E1/1: Photo documentation of a VW Caddy, delivered to Ms [M]

T 1914/15 - Facts and evidence

 Key points

• The Board applies the ‘new rule’ about the novelty of compounds based on (low levels of) impurities as given in T 1085/13.
• The Board also holds an argument of patentee about the technical effect in the context of inventive step inadmissible. 
• “ During the oral proceedings, the respondent [patentee] described a hypothetical "truly" comparative production example to corroborate the presence of [the technical effect of] a reduced metal corrosion ”
• “The assertion [of patentee] that metal corrosion could be reduced by starting from a composition in which the amounts of compounds of formulae (I) and (V) were both outside the scope of claim 1 and by reducing either of the two amounts to a value within the claimed range is an allegation of fact that can be proven or disproved by evidence.”
• As a comment, I think that this remark is quite important. In particular, there appears to be a fundamental relation between facts and evidence in legal proceedings: assertions that  “can be proven or disproved by evidence” are factual assertions; at the same time an asserted fact, if disputed by the other party, needs to be proven with evidence. See e.g. also the dissertation of R.H. De Bock, page 11 (in Dutch, "biedt een handvat voor..." on p.11).
• “The allegation of fact submitted by the respondent thus raised complex new issues which had not previously been addressed during the written proceedings and occurred at the latest possible state of the proceedings, namely at the oral proceedings. The discussion of these new issues at such a late stage of the proceedings would have been contrary to procedural economy.”

EPO T 1914/15 - link

4.3.3 The board accepts that the content of compounds of formulae (I) and (V) may be interpreted as amounts of impurities. However, it still disagrees with the appellant's conclusion. The board in this respect follows the rationale of decision T 1085/13 which states the following (point 3.7 of the reasons): "A claim defining a compound as having a certain purity ... lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed. Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity."

T 0384/16 - Claim interpretation as factual allegation

Key points

• The Board decides to not admit the new objection under Article 123(3) into the proceedings. 
• The Board: “the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings” (emphasis added).
• Let's see what the Board considers the "allegation of fact” in this case.
• The Board: “had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" [recited in claim 1 before the amendment] and a paint or coating composition "for improving intercoat adhesion" [recited in claim 1 after the amendment].”
• The Board does not identify any particular disputed factual allegations underpinning the proposed claim interpretation. Therefore I conclude that proposing a claim interpretation as such is treated as an "allegation of fact” by this Board (3.3.02). See also T1875/15 (same Board 3.3.02).
• I would say that considering claim interpretation (as such) to be a matter of fact is not an entirely common view (cf. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 US 318 (2015)). The advantage for the Board is that they can hold the new objection inadmissible. The logical consequence may be that however, perhaps, the Boards are obliged to consider timely evidence filed by the parties to proof such ‘facts’, e.g. expert declarations.

EPO T 0384/16 -  link

6.3 Admittance of the objection under Article 123(3) EPC

The objection is based on the change of claim category effected in claim 1 together with the change of the feature "with improved intercoat adhesion" to "for improving intercoat adhesion". According to respondent 2, this change of claim category extended the scope of protection in contravention of Article 123(3) EPC.

Respondent 2 did not raise any objection regarding Article 123(3) EPC in its reply to the statement of grounds of appeal, either explicitly or implicitly. As not disputed by respondent 2, it had been raised for the first time in its letter dated 13 November 2019. Consequently, in the same way as for the objection under Article 123(2) EPC, it is at the board's discretion to admit or not to admit this new objection pursuant to Article 13(1) RPBA 2007.

Had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" and a paint or coating composition "for improving intercoat adhesion".

Consequently, the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings.