EP 3 196 945 B1 relates to a solar cell.
Brief outline of the case
The OD found that claim 3 of a new MR=MRn was lacking IS over D1+ D5. The same applied to AR1.
The OD decided maintenance according to AR2
The proprietor and opponent 2 appealed.
In its communication under Art 15(1) the board considered that both claims 1 and 3 of the MR were lacking IS. The same applied to AR1. The board expressed doubts about the inventiveness of AR2. The further AR were either lacking IS, clarity ore should have been filed in first instance.
The proprietor withdrew its appeal at the end of the OP.
Eventually, the board confirmed the maintenance according to AR2.
The case is interesting as it deals with the refinement of arguments previously submitted and which further illustrate a party’s position.
The proprietor submitted only two days prior to the OP before the board detailed arguments in favour of IS of claim 1 of AR2. This arguments were also transmitted to the opponent prior to the OP.
The opponent’s point of view
Opponent 2 requested that the late-filed submission not be admitted into the proceedings, under Art 13(2) RPBA.
The submission contained a completely new set of arguments, which constituted an amendment to the proprietor’s appeal case.
The very late filing of arguments representing a fresh case constituted an abuse of procedure. The submissions could and should have been filed earlier.
The board’s negative preliminary opinion on the subject-matter of claim 1 of AR2 did not constitute a surprising turn in the proceedings, since it was always conceivable that a board would come to a different conclusion from the OD. No exceptional circumstances applied.
Opponent 2 referred to a series of decisions of the bords to support its reasoning.
The proprietor’s point of view
The proprietor argued that the late-filed submission was a direct response to the board’s preliminary opinion, which deviated from the impugned decision.
The arguments presented in the submission only elaborated in more detail arguments that had already been presented before. The aim of the submission was not to present a fresh case, but to facilitate discussing these arguments during the OP. Even if the submission had not been filed, its content could have been presented and discussed orally during the OP.
The board’s decision
The board concurred with opponent 2 that a negative preliminary opinion of the board deviating from the impugned decision per se is not an unforeseeable development of the appeal proceedings and should not be considered as constituting exceptional circumstances within the meaning of Art 13(2) RPBA. Consequently, such a deviation does not per se unconditionally justify an amendment to a party’s appeal case.
However, contrary to opponent 2’s view, the board is of the opinion that the arguments put forward in the late-filed submission do not represent a fresh case, and are in line with previous submissions of the proprietor.
More particularly, the part of the late-filed submission relating to AR2 explains in detail the technical effect of a claimed feature and how its specific position in relation to the whole solar cell is advantageous over the prior art.
These issues had already been addressed in the proprietor’s reply to the grounds of appeal and in a previous submission of the proprietor.
These issues at stake were also, albeit briefly, considered by the OD in its impugned decision.
Thus the part referring to AR2 of the late-filed submission relates to arguments considered in the decision under appeal that were submitted by the proprietor during the written phase of the appeal proceedings with its reply to the grounds of appeal of opponent 2.
The late-filed submission merely elaborates these arguments in more detail, as submitted by the proprietor. The board held that such a refinement of arguments previously submitted which further illustrates a party’s position must be allowed, especially when, as in the case at hand, the refinement of arguments concerns points where the board’s preliminary opinion differs from the impugned decision. Otherwise, the parties could only repeat their arguments put forward in the statement of grounds of appeal and the reply thereto.
In particular, OP, to which the parties have an absolute right under Art 116, would serve no purpose if such refinements were not allowed, cf. T 247/20, Reasons 1.3.
The arguments discussed in the late-filed letter relating to AR2 are not new arguments and do not represent a fresh case.
Concerning the decisions cited by opponent 2, the board noted that none of these decisions was comparable with the present case.
The board agreed with opponent 2 that the submission was filed extremely late. The board was of the opinion that the proprietor could and should have presented the arguments contained in the late-filed submission earlier in the proceedings.
However, the content of the late-filed submission pertains to a refinement of previously presented arguments and not to an amendment of the patent proprietor’s case. Thus it could also have been presented for the first time orally in the OP.
Comments
Filing a submission two days before the OP was certainly daring. Since the submission could be considered as a refinement of previous arguments, it could also have been made during OP.
It can be agreed with the board that OP would serve no purpose if refinements of the argumentation were not allowed.
It can be agreed with the opponent that a board can come to a different conclusion from the OD, and this does not represent exceptional circumstances.
Refinement of previous arguments vs. arguments based on facts and evidence already in the proceedings
The position taken by the present board is similar to that taken in T 1914/12 in which it was held that the boards have no discretion on the admissibility of belated arguments which are based on facts and evidence already in the proceedings. There is no difference in substance between belated arguments based on facts and evidence already in the proceedings and the refinement of arguments previously submitted.
T 1914/12 was criticised in T 919/22, commented on this blog,, a being an isolated decision. This was not true, as T 1914/12 has been confirmed in a number of other 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.Without quoting T 1914/12, the same conclusion was reached in T 1303/22, also commented in this blog.
On the procedure
D1=EP 2 682 990 and D5=WO 2012/136586 were not mentioned in the ESR. The ES was carried out in H01L.
D1 and the patent share two IPC classes in H01L. D5 is also classified in H01L……..
Comments
2 replies on “T 1544/22 – T 1914/12 is not dead – Refinement of arguments previously submitted”
I agree T1914/12 is not dead – its reasoning is based quite directly on the text of Article 114(2) EPC, so that would need a thorough rebuttal, which I have never seen (the RPBA don’t overrule the EPC Articles).
However, facts are only “already in the proceedings” (in appeal) if the party had specifically “argued” them in the appeal, i.e. specifically asserted them as a fact in an argumentation in a letter submitted in appeal. It is not enough that the fact is in the evidence (can be found somewhere in D34). The party must rely on it in an argumentation in its letters (Statement of grounds, reply, … ).
Furthermore, common general knowledge is treated as a fact, as well as claim interpretation, and also every assertion of what a document discloses. Citing a new paragraph in D1 can be treated as a new fact. It requires a bit of training.
Dear Plu,
Thanks for your comment, I fully agree with.
In the context of the present discussion, I would like to quote J 14/19.
In J 14/19, Reasons 1.5 to 1.11, it was held that submissions that are not directed at the “‘requests, facts, objections, arguments and evidence” contained in the statement of grounds of appeal or response constitute an amendment to the appeal submissions.
This also follows from Art 12(3) RPBA, which also refers to these elements of appeal submissions and stipulates that the statement of grounds of appeal and the reply must contain the complete appeal submissions of a party.
Hence, constitutes an amendment of the appeal [or opposition] submissions a new combination of legal and factual elements
– e.g. the choice of a different citation
– or a different passage of a citation as a starting point for the assessment of inventive step
– e.g. the reference to a passage already discussed in a different legal context
The mere enhancing of an already existing line of argumentation is to be distinguished from an amendment of the grounds of appeal [or opposition].