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EP 1 856 792 B2 relates to a method for detecting the position of a rotor.

Brief outline of the case
The OD decided maintenance according to AR13 as claim 1 as granted lacked N over D12=AT 408 591, classified as Y,A in the ESR established by the EPO. The same applied to AR1.
Proprietor and opponent appealed this decision.
In T 329/16, the board held that AR1 was not lacking N over D12.
The board did not admit objections as to IS against AR1 based on D12+CGK or D12+D9 under Art 12(3) and 13(1) RPBA, as those were too late.
The opponent raised an objection under R 106 against the non-admissibility which was dismissed.
The opponent filed a petition for review which has was unanimously considered as clearly not allowable in the composition pursuant to R 109(2a+3).

The board’s position as to the admissibility of IS objections
The board saw no convincing reason for this change of argument at the latest possible stage of the oral proceedings, since

• it was a foreseeable possibility that a board would deviate from the conclusions of the opposition division, and
• the opponent had not responded to a specific point of the board’s communication which had pointed out the need for discussion regarding a specific feature and the question of N of claim 1 of AR 1.

In addition, the board had to take into account that the patent proprietor had had no opportunity to prepare for the objections raised for the first time at the oral proceedings (ibidem).
As regards the objection under R 106, the board stated that the principle of the right to be heard did not include the right of a party to introduce a new submission at any stage of the proceedings and referred to Art 114(2), as well as Art 12 and 13 RPBA Since the late objections of lack of IS had not been admitted into the proceedings, the parties have not been heard on this argument. The objection was therefore to be rejected.

Moreover, there was nothing to remit as the objections of lack of IS were not admitted.

The petitioner’s=opponent’s point of view
The board’s view that the IS objection took the patent proprietor by surprise, since it had no opportunity to prepare for it was unfounded.
The proprietor itself had discussed the IS of AR1, starting from D12, inter alia, in combination with D9. Both the question of N of the MR and that of AR1, based on D12, were discussed in detail in the written proceedings and at the OP. A subsequent discussion of the question of inventive step on the basis of the same document D12 as the CPA would therefore merely have followed on from the discussion of novelty already held and, if necessary, drawn on the general knowledge of the relevant skilled person.
Secondly, the board’s view that the opponent had an obligation to raise corresponding objections regarding lack of IS already in the response to the appeal was not justified. Based on D12, the opponent had made detailed submissions on the lack of N and IS of the MR and of AR1 based on D12. For the opponent the additional feature was known from D12. Taking D12 as CPA, any further IS submission would have been superfluous, since the attack and the argumentation would have been identical to that of the MR.
The discussion of IS, based on the same disclosure passages of D12 as CPA and drawing on the common general knowledge, did not constitute an amendment of the opponent’s case, but only a further development of the original argumentation dealing with IS and N of the claim 1 of AR1
The opponent pointed out that the OD had already considered AR1 to be lacking N, which is why its IS had not been examined.

The EBA’s decision
The EBA noted that a substantiated submission against the IS of claim 1 of AR1 was not contained in the opponent’s reply to the appeal. The opponent’s intended submission at the OP on the IS could therefore not have constituted a mere further development of the submission directed against the IS of the MR or the N of AR1.
N and IS are two separate grounds for opposition. The questions of whether a feature is disclosed or whether a combination including this feature is obvious require two methodologically and substantively different examinations.
This applies even if the attack on IS and the attack on N are based on the same disclosure and general technical knowledge. In this case too, the technical effect of the feature conferring N, how the OTP is to be formulated and what reason the skilled person had for proposing the claimed teaching for solving the problem in question would have to be examined.
The board’s conclusion that the new objections constituted an amendment to the opponent’s case, which it had discretion to admit into the proceedings under Art13(1) RPBA, was therefore free of error of law.
Secondly, the board has both applied the correct criteria for admitting this argument and considered the correct questions, including whether this argument should have been raised earlier. Since the proprietor had argued the N of AR1 in the statement of grounds of appeal, the opponent had reason to raise the objection of lack of IS before the OP. In addition, the opponent could and should have attempted to submit written submissions on the IS of AR1 at least after the board’s communication. instead the opponent waited until the latest possible stage of the OP to make this submission.
The resulting decision on the non-admissibility is not procedurally objectionable.

Comments
The board as well as the EBA have been handling the present case in an extremely formalistic, not to say pedantic manner. If a board decides during OP that, contrary to what has been discussed and decided up to then that a claim does not lack N, it should reasonably admit an objection as to lack of IS based on the same document as CPA.
A vague statement in the communication under Art 15(1) RPBA cannot be taken as an invitation to file a new objection in reply. When looking at case law under Art 13(2) RPBA, any submission filed after the summons will not be taken into account unless a party is actually invited to file a submission or give cogent reasons for the late submission. For thes same token, the board could have dismissed an objection as to IS for being too late. Whatever a party does, it can always be turned at its disadvantage.
It is clear that, if the board had admitted the objection of lack of IS, it should have remitted the case. To avoid this, and possibly to see the case back, the board decided not to admit the objection so that the question of remittal did not even arise. Very easy to answer both questions at once.

The present board ignored two interesting decisions.
In T 131/01, cf. Headnote, the board held that, quite logically, that if a claim lacks N based on a given document, raising on the basis of the same document as CPA an objection of lack of IS contradicts the reasoning presented in support of lack of N.
In T 384/22, commented in this blog, the board held that a document might not be N destroying but can be used as CPA for an attack of IS.

Decisions against T 131/01
The present board and the EBA appear more aligned with a series of decisions disagreeing with T 131/01, although the reason for not admitting the IS objections relied on Art 12(3) and 13(1) RPBA.
In T 1242/21, commented on this blog, the board, wrongly, considered T 131/01 as a single decision not to be followed, and took pretext of the RPBA not to admit going from a N objection to an objection of lack of IS. on the contrary a lot of decisions applied T 131/01.
A similar reasoning was applied in T 1042/18, also commented in this blog, the board held that the N objection was not a new ground of opposition but could not be admitted under Art 13(2) RPBA as being too late.
A decision of the same kind is T 2482/22, also commented in this blog.

Conclusion to be drawn
Should a board want to finish swiftly with a case, it does not matter which Article of the RPBA is used. It can be Art 12(3), 13(1) or 13(2) RPBA. The EBA is not better and tries as much a possible to “cover” the doings of boards in matters of admissibility.
It is worth reminding here that in a article of JUVE, published in May of this year, the boards have been criticised for their constant quest for productivity and it was said that “The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA.” What more has to be said.

R 13/21

https://www.epo.org/de/boards-of-appeal/decisions/r210013du1