In a recent blog dealing with T 803/17 and T 882/17, I commented on the problem of the hierarchy of legal norms in the EPC system. It is worth noting that in T 882/17 we find a mention of J 14/19, see below.
In recent decisions, some of them, e.g. T 1042/18, commented in this blog, it appears that decisions like T 131/01 might become obsolete or be overruled in view of the RPBA20. T 131/01 is exemplary in this matter and will be discussed here.
Another example is the exception of the prohibition of the reformatio in peius under G 1/99, which is also quoted in T 882/17.
Although J 14/19 deals primarily about a stay of proceedings it gives also interesting definitions of what could be considered a change of a party’s submissions in appeal proceedings. In relation to J 4/19, it will also be interesting to look at T 1914/12.
T 1042/18, T 882/17, T 803/17 and J 14/19 are all indirectly linked.
T 131/01 – Changing in appeal from a lack of N to a lack of IS
In relation with G 7/95, OJ 1996, 626, and G 10/91, OJ 1993, 420, the board decided in T 131/01 that in a case where a patent has been opposed under Art 100(a) on the grounds of lack of N and IS having regard to a prior art document, and the ground of lack of N has been substantiated pursuant to Rule 55(c), now R 71(2,c), a specific substantiation of the ground of lack of IS is neither necessary – given that N is a prerequisite for determining whether an invention involves an IS and such prerequisite is allegedly not satisfied – nor generally possible without contradicting the reasoning presented in support of lack of novelty.
In such a case, the objection of lack of IS is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee.
This way of doing has been confirmed for instance in T 184/17.
When taking into account the logic behind Art 13(2) RPBA20, an objection of lack of IS will be late if it is raised before or during OP once the board has decided that N is given as, in principle, any submission filed after a communication of the board or a summons is not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
The case has not happened yet, but the fact that the board has decided during OP that N is given could be considered as an exceptional circumstance justifying an amendment of the opponent’s case.
This situation should be considered identical to the situation in which a board raises an objection not raised by any party in the annex to the summons, or when it turns out from the discussion during the OP that the maintenance of the patent is compromised in view of a new objection only raised during the OP.
In any case changing from an attack of lack of N to an attack of lack of IS is to be considered as an amendment to a party’s appeal case under Art 13(1) RPBA20.
Under Art 13(1) RPBA20, the board has the discretion to admit an amendment to the case, but it is possible to consider that there is quasi no discretion left to a board under Art 13(2) RPBA20.
In the scenario envisaged, the new objection can be dismissed at once under Art 13(2) RPBA20 of as it is manifestly late.
One can expect that a board would decide not to admit such a change as the aim of the RPBA20 is to help reducing the backlog of the boards. The application of Art 13(2) RPBA20 is quite strict and exceptions are not very frequent.
The consequence would be that in order not to be late, an objection of lack of N and of lack of IS based on the same document should be raised in opposition.
It is exactly this type of incoherent reasoning which T 131/01 wanted to avoid.
I do not include here the situation in which the objection of lack of N is supported by a given interpretation of the claim, whereas the objection of lack of IS is supported by a different interpretation of the same claim. Such a situation is not frequent, but cannot be excluded. Only in this situation both attacks are not a priori incoherent.
Not accepting the change of objection under Art 13(2) in the situation envisaged in T 131/01 directly affects the opponent in view of the new situation created by the board, be it before or during OP.
There are numerous decisions citing and using the conclusions drawn in T 131/01!
G 1/99 – Exception to the prohibition of the reformatio in peius
An exception to the principle of the prohibition of the reformatio in peius may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the OD in its interlocutory decision.
In such circumstances, in order to overcome the deficiency, the proprietor/respondent may be allowed under G 1/99 to file requests in a specific order which cannot be changed by the proprietor.
Not accepting new requests under G 1/99 directly affects the proprietor/respondent in view of the new situation created by the board, be it before or during OP.
For the same token as in T 131/01, the amended requests submitted by the proprietor in view of the fact that the patent cannot be maintained in the form decided by the OD would a priori not be admissible under Art 13(2) RPBA20 and would in any case represent a change under Art 13(1) RPBA20.
J 14/19 – Definition of an amendment
This decision is interesting as it tries to define an amendment in the appeal procedure.
According to J 14/19, Reasons 1.3-1.4, the term “arguments” in Art 12(2) RPBA20 must be interpreted in such a way that the result of the interpretation is consistent with Art 114(2).
Arguments of a party relating exclusively to the interpretation of the EPC do not contain any factual element, i.e. no reference to “facts and evidence” within the meaning of Art 114(2).
Pure legal arguments are therefore not covered by the term “arguments” in Art 12(2) RPBA20.
In the Board’s view, the term “arguments” in Art 12(2) RPBA20 rather concerns “statements containing both elements of law and elements of fact.“
In Reasons 1.8 the board distinguishes between the mere refinement of an already existing line of argumentation and an amendment of the appeal submissions and refers as well to T 247/20, Reasons 1.3.
The board explains in the same point that the mere fact that a party has already introduced a certain document in the appeal proceedings does not mean that its entire content is part of that party’s appeal submissions. Therefore, if a party relies in its further submission on passages of such a document other than those previously relied upon, this may result in an amendment of the appeal submission (see T 482/18, point 1.2.5 e) of the grounds).
In the board’s view, in principle, both a new combination of factual elements (e.g. the choice of a different citation or a different textual passage of a citation as a starting point for the assessment of inventive step) and a new combination of factual and legal elements (e.g. the reference to a textual passage already discussed in a different legal context) constitute an amendment of the appeal submissions.
The explanations given about a true change of the appeal submissions applies not only before the boards but also mutatis mutandis before an OD and actually corresponds to a long standing practice. A new combination of documents or taking into account different parts of a document is a change in the argumentation, i.e. a change in the legal and factual framework of the opposition procedure under R 76(2,c).
What was not submitted by an opponent at the end of the opposition period, cf. R 76(2,c), during the opposition procedure, cf. Art 12(6) RPBA20 or after the time limit set (virtually) under Art 13(1) RPBA20 is an amendment and changes the legal and factual framework of the appeal procedure.
According to J 14/19 any new submission going further than a mere refinement of an already existing line of argumentation during OP before a board is an amendment which has to be queried under Art 13 RPBA20.
T 131/01 is an interpretation of the EPC which should thus not be changed due to the RPBA20.
On the other hand, the conclusion is that even if in T 131/01 going from an objection of lack of N to a lack of IS does not represent a new ground of opposition , it nevertheless represents a change in a party’s appeal case following a communication or a summons.
The same applies to the possibility given to a proprietor to amend its claims in the situation dealt with in G 1/99.
G 1/99 has given raise to numerous decisions, even more than T 131/01. The application of G 1/99 should not be compromised by the RPBA20.
T 1914/12 – Refinement of an already existing line of argumentation
As far as the refinement of an already existing line of argumentation during OP it appears good to refer to T 1914/12 which is in clear opposition to T 1621/09 and T 1069/08.
T 1914/12 has been confirmed by numerous following decisions, e.g. T 47/18, T 1381/15, T 315/15, T 133/19, T 1359/14, T 369/12, T 1875/15, T 691/16, T 128/15 and T 325/16. It is thus important to look at this decision.
According to T 1914/12 and the following decisions, the boards have no discretion on the admissibility of “belated arguments” which are based on facts and evidence already in the proceedings, see Reasons 7.
For the board, it was important to distinguish between an “argument” and a “fact“. For the board there is no difference between an “argument” and a “line of argumentation”.
The EPC does not contain a definition of the terms “fact” and “argument”. However, the board noted that Art 114(1), English version, the EPC distinguishes between “facts, evidence and arguments“. For the legislator, these are therefore three separate categories.
Furthermore, in G 4/92, OJ 1994, 149, the EBA considered that new arguments “constitute, in principle, reasoning in support of legal and factual arguments already put forward”, see Reasons 10.
The board concluded in G 4/92 that the common meaning of words and their use in the jurisdictional context leads to a distinction between the terms “fact” and “argument“. A “fact” can be understood as a factual element (or allegedly such) or a circumstance on which a party bases its claims, whereas an “argument” would designate a proposition that a party bases on one or more facts and that supports the plea it is making.
In T 1914/12, if a document, already in the proceedings, has been used for attacks under Art 54/56, a new distinguishing feature asserted for the first time in appeal proceedings, the reference to this further new distinctive feature is a mere argument which has to be admitted without reservation as it is not an amendment.
T 325/16 has confirmed T 1914/12 and applied it to legal arguments.
It is thus possible to conclude that T 1914/12 and J 14/19 are to a large extent congruent.
However, according to both decisions, the change from a N attack to an IS attack is a change of line of argumentation even if it is based on the same fact.
According to Art 13 RPBA20 such a change need not be admitted in the appeal procedure.
It has however to be checked whether this is acceptable in view of the various rankings of legal norms in the EP system.
Hierarchy of norms – do the RPBA have the same ranking as the Implementing regulations
That after a change of a legal norm, some decisions can become obsolete or are overruled is not at stake here.
The question is however whether the RPBA in general, and the RPBA20 in particular, can render obsolete well established case law of the EBA and of the BA.
In order to give a reply to this question, it is necessary to see whether the RPBA can be considered as having the same ranking as the Implementing regulations or not.
If the answer is positive, then the RPBA are to be considered at the same level/ranking as the Implementing regulations and the RPBA can even be in contradiction with the latter.
If the answer is negative, then the RPBA are subordinate to the Implementing regulations and cannot contradict them.
In G 6/95 the EBA considered that the then new R 71a(1), now R 116(1) did not apply to the BA. This decision boils down to give a positive reply to the above question.
In order to come to this conclusion the EBA considered its interpretation of R 71a(1), now R 116(1) to be consistent with R 66(1) now R 100(1), which provides that the provisions relating to proceedings before the department which has made the decision from which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis, “unless otherwise provided“.
Art 11(2) of the then valid RPBA stated that a board may send a communication with a summons to oral proceedings, and thus conferred a discretion upon the BA as to whether or not to send a communication with the summons.
On the other hand, R 71a(1), now R 116(1) provided that the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. This means that a communication annexed to the summons is mandatory.
The whole argumentation of the EBA in G 6/95 hinged on the specification “unless otherwise provided”. As the then valid RPBA had a different wording of that of R 71a(1), the RPBA were de facto given the same ranking as the Implementing regulations.
In order to come to this conclusion, the EBA argued that by imposing the issuance of a communication in annex to the summons, the independence of the boards guaranteed by Art 23 would not any longer respected.
In G 6/95 the EBA considered that although according to Art 23(4) the RPBA and the RPEBA shall be adopted in accordance with the Implementing Regulations, the Administrative Council could not adopt afterwards an Implementing regulation which was in the end contrary to the decision by which it adopted the then valid RPBA giving the discretion to the boards to issue or not a communication.
This was the more so since according to R 10(3) EPC73 the sole authority responsible for determining the RPBA pursuant to Rule 11 EPC73 was the Praesidium of the boards
In this respect it is interesting to have a look at the comments submitted at the time by the president of the EPO to the EBA, cf. Point III of the “facts and submissions” in G 6/95.
Especially in Point III (e) the president raised the question of the relative ranking of the contradictory provisions, i.e. Rule 71a EPC73 and Article 11 RPBA, which both were adopted by a competent legislative body.
In this respect the principle that “lex superior derogat legi inferiori” had to be observed. The competence of the Administrative Council was conferred by Article 33(1,b). If it used this competence and adopted a provision in the Implementing Regulations, this provision was of a higher rank and therefore prevailed over a provision in the RPBA, which was adopted by a body of lower status in the legislative hierarchy.
The EBA did not agree with the position of the president of the EPO.
I am thinking that the position of the President in G 6/95 is the right one.
The situation has changed – Ranking of the RPBA
Besides adopting the position of the President in G 6/95, it is possible to consider that there are further reasons leading to the conclusion that the RPBA do not benefit from a preferential situation and cannot be considered as having the same ranking as the Implementing regulations.
A different body adopts the RPBA
At the time of G 6/95, the RPBA consisted of a set of provisions adopted by the Praesidium of the BA.
This is not any longer the case with the RPBA20 which are actually adopted by the “Boards of Appeal Committee” in accordance with R 12c(2).
According to R 12b(3,c) the Praesidium merely advises the President of the Boards of Appeal on proposals for amendments to the RPBA. The Praesidium has lost any competence in deciding the RPBA.
Absence of “otherwise provided”
According to Art 15(1) RPBA20, last §, it is now mandatory for a board to issue a communication. There is thus not any longer a situation in which the RPBA contain a provision “otherwise provided”, that is different from that of the Implementing regulations.
Different weight in the deliberation of the Administrative Council
Furthermore it should be kept in mind that the Implementing regulations are adopted by a ¾ majority of the Administrative Council of the EPO, whereas the RPBA are only adopted by a simple majority.
This is a further argument for denying the RPBA the same ranking as the Implementing regulations.
Ranking of the RPBA in the EP legal system
It is only due to the fiction created in G 6/95 that it was possible to consider that the RPBA have the same ranking as the Implementing regulations and hence can render obsolete established case law of the EBA and of the BA.
What has clearly been render obsolete and overruled by the RPBA20 is G 6/95.
The fiction created by the EBA in G 6/95 has ceased to exist with the amended R12 and the manner in which the RPBA are nowadays adopted.
In the hierarchy of norms, the RPBA rank below the Implementing regulations and, obviously, the EPC itself.
The RPBA cannot overrule previous decisions of the EBA and BA
In following the aim of decreasing the backlog of the BA, it was never intended by the legislator, in this case the Administrative council of the EPO, for the RPBA to render well established lines of case law of the EBA and of the BA obsolete or overruled. If it would have been its intention, the Administrative Council would have clearly said so. It is a matter of fact that the Administrative Council remained silent on this topic.
The long lasting lines of case law of the EBA and the BA should not be thrown overboard just because the RPBA20 have given the boards a much larger extent of discretion.
Those existing lines of case law rely on interpretations of the EPC and its Implementing regulations, which cannot be simply dismissed because we have new rules of procedure.
Art 13 RPBA20 should be applied with much more caution
In the situations similar as those given above here, the fact that a new situation is created before or during the OP by the boards themselves should lead to accept the presence of exceptional circumstances pursuant Art 13(2) RPBA20 without the party having to bring forward cogent reasons.
Those exceptional circumstances should therefore lead to the admission of new requests or new lines of argumentation in order to keep valid decisions of the BA and of the EBA corresponding to well established lines of case law.
A mere dismissal under Art 13(2) RPBA20, based on the assumption that the RPBA20 have the same ranking as the Implementing rules is not acceptable as the way the RPBA are adopted has drastically changed.
That belated requests admissible under Art 13(2) RPBA20 can still end up not being admissible under Art 13(1) RPBA20 remains however valid, e.g. T 824/18 or T 1786/16.
In the situations exposed above here, neither an opponent nor a proprietor can be disadvantaged just because a board has come to a different conclusion from that the first instance.
Overruling with the RPBA20 long established lines of case law which were useful for parties in specific situations and which are beyond their reach is not acceptable.
Even if the change of objection or the filing of new requests is considered as a mere procedural aspect, the legitimate expectations of users of the EP system cannot be ignored.
An opponent or a proprietor has to be able to defend himself when a new situation is created by a board before or during OP.
The aim of the RPBA, reducing the backlog of the boards, cannot be such that what used to be a normal procedural act, changing the objection or filing new requests, is not any longer admissible.
Be it the OD or the boards, the aim of the EPO cannot be to maintain patents which have no raison d’être or to revoke patents for procedural reasons which are not in the hand of the party concerned.
There should be a limit to the extreme formalism presently shown by the boards.
Diverging case law in procedural matters should be avoided
In view of the vastly diverging case law in procedural matters brought about by the RPBA20, e.g. combination of granted claims, deletion of claims, different health standards for each board, potentially “un-admitting” late filed submissions admitted by an OD, all discussed in the present blog, it would appear more appropriate for the boards to have similar procedural rules for similar procedural situations.
The same actually applies to the application of the prohibition of the reformation in peius when it comes to the admissibility of the opposition. We have now opposing decisions in this matter as well. That my preference goes to T 882/17 over T 1178/04. is actually irrelevant.
In procedural matters, the case law of the BA used to be more or less predictable .
What is happening since the entry into force of the RPBA20 is a total lack of predictability in procedural matters before the BA.
This could have in the long run an unfavourable effect on the BA and their acceptance in general.
Further problems of hierarchy of norms
There are further problems related to the hierarchy of norms in the EPC legal system.
I am thinking here about decisions of the president and communiqués of the EPO affecting the granting and opposition procedures.
The EPC can only be amended by a Diplomatic Conference, cf. Art 172. The limits of amendments of the Implementing regulations by the Administrative Council are set in Art 164(2).
The functions defined in Art 10(2) and specifically in Art 10(2,a) can manifestly not go beyond the mechanisms of amendment of the EPC under Art 172 or of the Implementing regulations in Art 164(2).
One conclusion to be immediately drawn is that the EPC cannot be amended by secondary legislation as has been claimed by the president’s representatives during the OP in G 1/21.