When revising my presentations on procedural aspects in opposition in order to take into account T 1842/18, I came across T 184/17.
T 184/17 takes a contrary stance to T 1042/18.
In Point 4.3 of the reasons, the board asked itself whether the new objection of lack of IS still falls under the principle as expressed in G10/91, or if it can be admitted into the appeal proceedings without the agreement of the patentee.
The Board concurred with the conclusion drawn in T 131/01 (OJ EPO, 2003, 115) that under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since – given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art – this would contradict the reasons in support of lack of novelty.
The Board held thus that the objection of lack of IS cannot be considered as a fresh ground for opposition.
The board therefore decided to admit the raised IS objection into the appeal proceedings under Art 114(2), although strictly speaking it could as well be considered late.
In T 1042/18 the board accepted that the objection of lack of IS based on documents D4 or D5 did not constitute a new ground of opposition within the meaning of the case law of the EBA, but blocked it under Art 114(2) by invoking Art 13(2) RPBA20.
In T 1042/18 it is specifically stated that the ruling in T 131/01 cannot, in the board’s view, be applied in its generality to the appeal proceedings and the rules on late filings under Art 13 RPBA20.
In all fairness it has to be said that T 184/17 was decided under the RPBA07 and not under the RPBA20.
The legal situation might thus have changed, but it does not alter the fact that, in matters of late filings, the discretion given to the board has been applied quite differently in T 184/17 and in T 1042/18.
In both cases the rules on late filings in the RPBA07 and in the RPBA20 have their legal basis in Art 114(2).
In T 184/17 the new line of argument was not late, although it could have been considered late under the RPBA07. In T 1042/18 it was considered late under the RPBA20 and that was it.
T 184/17 shows that the discretion of the boards can be applied in a more reasonable way when it comes to switch between lack of N and lack of IS on the basis of the same document once the board has decided that N was given.
If for one board the new line of argument IS instead of N, supported by existing case law, is not late, why can it not be the case before another board?
The aim of the RPBA20 was clearly to help reducing the backlog of the boards. This is a legitimate aim, although the origin of the backlog is well known and was actually not directly caused by the boards.
It is however doubtful that the RPBA20 have been devised so that pragmatic and well established case law is simply thrown overboard for extremely formalistic reasons.
Like for combining claims as granted, deletion of claims or holding OP by ViCo, the discretion of the BA can be applied in many different ways.
In my humble opinion, T 131/01 and T 184/17 should be followed and T 1042/18 should remain a one-off.
In order to clarify the matter, a referral to the EBA appears more than necessary.
This should not only be the case here, but also when it comes to combining claims as granted, deletion of claims or holding OP by ViCo. See my various contributions on those topics.
However, it cannot be that it becomes a procedural lottery when going to appeal.
Some convergence in procedural case law is badly needed.
Original blog publication