CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1186/20 – Novelty is to be checked before Inventive Step even in appeal  

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The patent relates to an oven for baking food products.

Brief outline of the case

The OD maintained the patent according to AR6. Claim 1 as granted was held lacking IS by the OD.

This decision was appealed by both the proprietor and the opponent.

Eventually, the board confirmed the decision of the OD.

The case is interesting in that a new objection of lack of N was raised in appeal by the opponent against claim 1 of the patent as granted.

The proprietor requested that the N objection based on D3 should not be admitted.

The board’s consideration of the novelty objection based on D3

The board noted that the novelty objection based on D3 thus constituted a fresh ground for opposition and referred to G 7/95, headnote, first sentence.

The N objection was raised for the first time with the statement setting out the grounds of appeal as an “auxiliary approach” relying on a specific – and compared to the opposition proceedings differentunderstanding of the feature [1.5] (“an air trap for preventing the steam from reaching the outer environment through the inlet itself”).

D3 had already been relied on in the notice of opposition as the starting point for an objection of lack of IS, an objection which was re-submitted in the statement setting out the grounds of appeal. Construing the features and then establishing the distinguishing features with respect to the closest prior art D3 is a precondition for the assessment of inventive step.

Following G 7/95, headnote, second sentence, the board decided to consider the allegation that the claims lacked N over D3 in the context of deciding upon the ground of lack of IS.

Opponent’s interpretation of the “air trap” was not deemed persuasive. As already concluded by the OD in the appealed decision, the skilled person understands the term “air trap” in feature [1.5] as a distinct technical feature and not merely as a function of the overall tank structure as such.

An air trap is a technical term with a distinct meaning and encompasses a “U-” or “S”-shaped pipe section to prevent gases (here vapour) from escaping a liquid body. This structure is commonly known to a skilled person (e.g. “drain traps”). Such an air trap is shown in the patent (reference 20), but also e.g. in D5, Figure 4 (reference 31).


Independently of the RPBA, 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 the present decision, the board took a position with is more in line with the spirit of the EPC as exemplified in G 10/91 as well as G 1/95 and G 7/95. It did also not put the RPBA above the case law established by the EBA.

The present decision is to be supported as it does not simply refer to the RPBA, but take duly account of the substance of the case. It might take a bit of time for the board, but it gives the satisfaction to the parties of having been properly heard and their arguments duly considered.

In this respect, the present decision could appear to be in contrast with T 1042/18 commented on this blog, but it simply does the things the correct way round. Before discussing IS, N has to be checked in order to determine whether there are differences.

In T 1042/18, Reasons 4.9, it was held that an objection of lack of IS raised for the first time in OP before the board of appeal on the basis of a citation which was previously only the subject of an objection of lack of N thus constitutes an amendment of the grounds of appeal under Art 13(2) RPBA.

In T 1042/18 the board also referred to G 10/91, G 1/95 and G 7/95.

The present decision shows at best that different boards can have a different interpretation of decisions of the EBA if they put first the RPBA and ignore the substance as it was the case in T 1042/18.

When a board revises a decision of lack of sufficiency or of added matter, the rule is to remit for further prosecution as in general other grounds of opposition have been raised in the statement of grounds of opposition. Those should then be looked at. The same applies when a board considers N to be given contrary to what the OD has decided.

T 131/01 makes clear that a same document cannot be at the same time N destroying and CPA. If a document is N destroying, then all features are known from this document. If a document is CPA there is at least one difference. Let’s stay coherent, and not merely dismiss the argument of lack of IS as being late, when the board disagrees with the OD. That boards want to get rid of cases as swiftly as possible is not a reason to act as done in T 1042/18.


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

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) RPBA.

If the OD erred in its finding and incorrectly decided for lack of N, the opponent should be allowed to continue with an objection of lack of IS once the board has decided during OP, that the objection of lack of N cannot be sustained. Anything else is neither fair nor reasonable, even if it costs a bit of time to the board.

In T 1048/12, the board reversed the decision of lack of N of the OD. In such a circumstance, the opponent should become the opportunity to argue lack of IS. That the board does not want to do this during the OP, is acceptable, but then the case should be remitted to the OD for further prosecution.

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