Introduction of a new ground of opposition in appeal
Independently of the Rules of Procedure, a new ground of opposition can only be raised before a Board of Appeal if the proprietor consents to its introduction, cf. G 10/91, 1993, 408 as well as G 1/95 and G 7/95, OJ 1996, 615,626
In any case, the three levels of convergence under the RPBA21 can prevent, as such, the filing in appeal of a late ground for opposition.
Exception in view of G 1/95 and T 131/01
In a case where a patent has been opposed under Art 100(a) on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant R 76(2,c), a specific substantiation of the ground of lack of inventive step is neither necessary step given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied nor generally possible without contradicting the reasoning presented in support of lack of novelty.
In such a situation the ground of lack of inventive step is not a new ground of opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee
Change in case law
However in view of Art 13(2) RPBA21 the situation has changed when looking at the decisions of some boards.
In view of the RPBA21 and especially of Art 13(2)RPBA21, a new line of case law is developing.
Changing from an objection of lack of novelty to an objection of lack of inventive step on the basis of the same document
- is still not considered as a new ground of opposition as decided in G 1/95 and T 131/01,
- but is now considered as an amendment to the opponent‘s case as it occurs during oral proceedings and is only admitted at the discretion of the board under Art 13(2) RPBA21.
In appeal proceedings, restrictions on new submissions are imposed both
- by the case law of the Enlarged Board of Appeal in G 10/91, G 1/95 and G 7/95, on the consideration of new grounds for opposition
- and by the possibility granted to the Boards in Art 114(2) and the RPBA not to admit late submissions.
Submissions which are not directed to the requests, facts, objections, arguments and evidence contained in the statement of grounds of appeal or reply have the effect of amending the grounds of appeal within the meaning of Art 13(2) RPBA21. See also J 14/19, Reasons 1.4 of the grounds.
These limitations exist independently of each other and have a cumulative effect (Reasons 4.5).
In this context, both a new combination of factual elements
- e.g. the choice of a different citation or a different passage of a citation as a starting point for an objection of inventive step
and a new combination of factual and legal elements
- e.g. the reference to a document or a passage in a different legal context constitute an amendment of the appeal case of a party.
An objection of lack of inventive step raised for the first time in oral proceedings before the Board of Appeal on the basis of a citation which was previously only the subject of an objection of novelty thus constitutes an amendment of the grounds of appeal under Art 13(2) RPBA21 (Reasons 4.9)
The board eventually considered that a late inventive step objection based on two documents used for a novelty objection did not represent a new ground of opposition but did not admit it under Art 13(2) RPBA21 as being late.
The position taken in T 1042/18 (Board 3.2.02) has been taken over in the following decisions:
- T 1816/17 (Board 3.2.02) Reasons 12, last but one §
- T 1776/18 (Board 3.3.09) Reasons 4.6.3
- T 2161/18 (Board 3.3.03) Reasons 5.4. 4th §
- T 2866/18 (Board 3.2.03) Reasons 4.7
- T 151/19 (Board 3.2.06) Reasons 3.7.5
The new line of case seems to stem essentially from some mechanical boards and some chemical boards.
It will have to be seen if other boards will follow the same route.
It is fully acceptable that during oral proceedings before a board
- a new combination of factual elements and
- a new combination of factual and legal elements
constitute an amendment of the appeal submissions, which is only admitted at the discretion of the board under Art 13(2)RPBA21.
This actually corresponds to the considerations in J 14/19.
This position is however not acceptable when the board decides that the change of an objection of lack of novelty to an objection of lack of inventive step on the basis of the same document constitutes an amendment to a party’s appeal case.
This position renders moot the considerations in T 1914/12 and in the corresponding decisions.
Such a change of objection is in general due to a change of opinion of the board which decides during oral proceedings that novelty is given.
Not admitting the new objection of lack of inventive step under Art 13(2) RPBA21 is clearly to the detriment of the opponent as it results from exceptional circumstances for which the cogent reasons are manifest.
If the change of opinion is announced in the annex to the summons then the new objection of lack of inventive step should be raised immediately after receipt of the summons, as it could be admitted under Art 13(1) RPBA21.
It is a pity to have to forget the pragmatic solution offered in T 131/01 and in T 184/17, just for the sake of a very restrictive and actually abusive application of Art 13(2) RPBA21.
It cannot be that the vast discretion offered to the boards in procedural matters ends up by de facto ignoring decisions of the Enlarged board of Appeal and vested lines of case law on procedural matters.
I would be inclined to think that the question is of general importance and should not be left to individual boards to decide. A referral of corresponding questions to the Enlarged board of Appeal seems appropriate.
The same applies to the question of the deletion or combination of claims in appeal procedure.
Going to appeal has become a procedural lottery. This is good neither for the EPO as a whole nor for the boards of appeal in particular.