Brief outline of the procedure
The opposition was rejected and the opponent appealed.
The grounds of opposition under Art 100(a) were lack of N and IS.
The rejection of the opposition was confirmed by the board.
The board found that none of D1, D4, D5, D6, D7, D9, D10, D12 and D15 could support an objection of lack on N.
A request for referral to the Enlarged Board of Appeal was also dismissed.
Late filed objection of lack of IS over D4 and D5 – Referral to the EBA
The objection of lack of IS over D4 and D5 was raised by the opponent for the first time during the OP before the Board.
The opponent stated that it had raised N objections on the basis of D4 and D5, which meant that he could also raise IS objections on the basis of these documents at a later date without being restricted by Art 13(2) RPBA20. In this context, he referred to the case law of the Boards of Appeal of the EPO, IV.C.3.4.2 and in particular to decisions T 597/07, T 131/01 and T 635/06 cited therein.
For the opponent, the change the objection of lack of IS based on one of the documents D4 or D5 should be taken into account in the appeal proceedings because the appellant had previously raised N objections based on these documents. In his view, this constituted exceptional circumstances under Art 13(2) RPBA20.
In this respect, the opponent suggested to submit the following questions to the EBA:
1. “Is the opponent-appellant prevented in the later course of the proceedings from invoking documents which have hitherto only been used for attacks for lack of novelty for the first time for lack of inventive step after novelty has been conceded in the course?”
2. “If the answer to question 1 is ‘no’, is there a time in opposition appeal proceedings by which such an attack, now directed against inventive step, must be raised, and if so, what time?”
3. “If the answer to question 1 is ‘yes’, does it make any difference should the document at issue have at least already been used as a combined document (i.e. not as a starting point) against inventive step?”
The opponent’s position as far as late documents are concerned
The opponent filed a series of documents when entering appeal, D28-D32a and during the latter, D33.
D28 and D29 had been recently identified in the light of the OD’s comments on D4 in the contested decision and had been filed at the earliest opportunity.
D30 to D32a demonstrated that the use of like parts was part of the engineer’s toolkit, which played a special role with regard to claim 1.
D33 had only been submitted barely one month before the OP as it had not been available to the opponent earlier. Moreover, this document was prima facie highly relevant, in particular in the light of the respondent’s submissions.
The board’s position as far as late documents are concerned
D28 and D 29
The disclosure of D4 was discussed at length by both parties in the proceedings at first instance. The fact that the OD shared the proprietor’s view in the contested decision does not constitute a change of the issues discussed in the proceedings and had to be considered as a possibility by the appellant at any time. Whether D28 and D29 were not known to the opponent at an earlier point in time or were assessed differently by the opponent in terms of their importance is not decisive. From an objective point of view, the opponent could and should have already submitted documents D28 and D29 and the objections based on them in the proceedings at first instance. Furthermore the board found that the disclosure of D28 and D29 did not go beyond that of D4.
D28 and D29 were not admitted under Art 12(4) RPBA07.
D30 to D 32
The Board agreed in general that the use of like parts is known by skilled person in so far as the parts to be used are supposed to have the same function. There is no need for additional documents to show this. Thus, D30 to D32a are prima facie not relevant.
D30 and D32a were not admitted under Art 12(4) RPBA07.
D 33 was filed after receipt of the summons. The opponent could not show exceptional circumstances justifying a late filing existed. The possible prima facie relevance of the evidence is not sufficient in itself.
D33 was not admitted under Art 13(2) RPBA20
Admissibility of objections of lack of inventive step based on D4 or D5
These objections were raised by the appellant for the first time during the OP before the Board.
For the board, those objections represent an amendment of the opponent’s case and have to be scrutinised under Art 13(2) RPBA20.
The decisions T 597/07, T 131/01 and T 635/06 cited by the opponent concern the consideration of new grounds of opposition submitted after the opposition period in accordance with decisions of the EBA G 10/91 G 1/95 and G 7/95.
The board noted that in appeal proceedings, restrictions on new arguments are imposed not only 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, but also by the possibility given to the Boards in Article 114(2) EPC and the RPBA not to admit late arguments. These limitations exist independently of each other and have a cumulative effect.
In the present case, both grounds of lack of N and lack of IS were raised and substantiated in the notice of opposition.
The objection of lack of IS based on documents D4 or D5, which was raised for the first time in the oral proceedings before the Board of Appeal, does not constitute a new ground of opposition within the meaning of the case law of the EBA.
Rather, it is a belated argument to be assessed under Article 114(2) EPC and the provisions of the RPBA20.
For the board, the question at stake in G 10/91, G 1/95 and G 7/95 is whether a new ground of opposition has been brought into the procedure in appeal.
On the other hand, in Art 13 (2) RPBA20, the question at stake is whether there has been a change in the grounds of appeal.
These two questions are not congruent.
While a new ground of opposition raised for the first time after the notification of the oral proceedings before a board regularly constitutes an amendment of the grounds for appeal within the meaning of Art 13 (2) RPBA20, an amendment of the grounds for appeal, conversely, does not at all require that it consists of a new ground for opposition.
For this reason alone, the opponent’s arguments that the objection of lack of IS based on one of the documents D4 or D5 does not constitute a new ground for opposition are irrelevant.
For the board, submissions that 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) RPBA20, cf. J 14/19, Point 1.4 of the grounds.
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 submissions.
Thus, an objection of lack of IS raised for the first time during OP before a board on the basis of a citation which was previously only the subject of an objection of N constitutes an amendment of the grounds of appeal under Art 13(2) RPBA20.
For the board, the statement in T 131/01 that it is impossible to substantiate the ground of opposition of IS if lack of N is also asserted on the basis of the same document cannot, in the board’s view, be applied in this generality to the appeal proceedings and the rules on late filings under Art 13 RPBA20.
The board held that in appeal proceedings, a first instance decision already exists, which, from the opponent’s point of view, is usually also issued taking into account the proprietor’s counter-arguments. At this stage of the proceedings at the latest, it is therefore regularly possible – and also usual – for an opponent to first argue that the disclosure content of a certain document is prejudicial to novelty and then, in the event that the board of appeal reaches a different view in this respect, to additionally assert a lack of inventive step on the basis of the same document.
The fact that this is possible and usual is also shown in the present case by the behaviour of the appellant itself, which raised both objections to novelty and objections to lack of inventive step on the basis of documents D1, D7, D9 and D12 in the statement of grounds of appeal.
The fact that the appellant only raised novelty objections in the statement of grounds of appeal on the basis of documents D4 and D5 in full knowledge of the contested decision – in which these documents were considered not to be prejudicial to novelty – cannot be to its advantage.
The board dismissed the referral as the case law to which the opponent referred does not concern the application of Art 13 (2) RPBA20, but the examination of new grounds for opposition and thus a completely different constellation. Moreover, the Board of Appeal was itself able to answer the relevant legal questions in the present case without any doubt.
Late filed documents
The reasons why documents D 28 to D33 were not admitted do not give raise to any comment as they are in line with existing practice and case law.
It can be wholeheartedly agreed with the board that 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 submissions, and may not be admitted under the RPBA07 or 20. Such new combinations also constitute an amendment of the opposition submissions.
Change from a N objection to an IS objection
In the present decision, considering that changing from a N objection to an IS objection is not possible under Art 13(2) RPBA20 boils down to a very petty and severe interpretation of Art 13(2) RPBA20.
The opponent was certainly unfortunate when he did so with D1, D7, D9 and D12 but not with D4 and D5 in the grounds of appeal.
The decision is correctly motivated, and new grounds of opposition are certainly an amendment to a party’s case.
However, the existing case law, especially T 131/01, has given a very pragmatic solution to the problem of an impossible combined objection of lack of N and lack of IS on the basis of the same document. I have some doubts that, as claimed by the board, such an objection is at all usual, especially in view of T 131/01.
In view of the existing case law and especially T 131/01, a referral to the EBA would have been fully justified, probably with slightly different questions. The present questions are too broad and a reference to T 131/01 appears necessary.
I would allow myself to go as far as to claim that the present board has ignored Art 20(1) RPBA20 as it ignored the specific context in which this decision was taken.
One lesson to be held, is to raise all possible objections when entering appeal, even if this means raising an objection of lack of IS next to an objection of lack of N based on the same document.
We now simply have to wait for another board to come up and claim under Art 12(6) RPBA20, second sentence that such an objection is not admissible and should have been raised in first instance. The mess will then be complete.
The pragmatic solution accepted in T 131/01 should not be thrown overboard just for the sake of the RPBA20.