Admissibility of new arguments based on already on file prior art refused by Board of Appeal: Exception or the Rule?

K. Jáuregui Urbahn (DE)

The following is a report on an appeal T1691/17-3.2.01 of 2019. The procedure may be indicative of a decision-making practice in relation to the application of the new Rules of Procedure of the Boards of Appeal (RPBA 2020) with regard to the admissibility of new arguments, namely Art. 12 (2) (4) RPBA. If such a procedure, as reported here, should be considered now as the rule then this could have tremendous consequences of the course for future oral proceedings in oppositions.

Im Folgenden wird über eine Beschwerde T1691/17-3.2.01 aus dem Jahr 2019 berichtet. Das Verfahren ist möglicherweise für eine Entscheidungspraxis kennzeichnend, wie die Beschwerdekammer die neue Verfahrensordnung der Beschwerdekammern (VOBK 2020) im Zusammenhang mit der Zulässigkeit von neuen Argumenten, nämlich Art. 12 (2) (4) VOBK, anwenden kann. Sollte nun ein solches Verfahren wie hier berichtet als Regel werden, könnte dies durchaus enorme Konsequenzen für den Verlauf von zukünftigen mündlichen Verhandlung in Einspruchssachen haben.

Ci-après est fait le rapport d'un recours T1691/17-3.2.01 décidé en 2019. La procédure est éventuellement caractéristique d'une manière typique dont la chambre de recours peut appliquer le nouveau Règlement de Procédure des Chambres de Recours (RPCR 2020) en ce qui concerne la recevabilité de nouveaux arguments, à savoir l'article 12 (2) (4) RPCR. Si une telle procédure devait être considérée maintenant comme la règle alors cela pourrait avoir d'énormes conséquences sur le cours de futures procédures orales en oppositions.

Present paper is focused on a specific procedural act, namely if some novelty and/or inventive step attacks based on prior art documents can be held inadmissible on appeal despite the fact that both the documents on which the attacks are based had already been submitted and those grounds had already been raised and held admissible in the procedure before the Opposition Division.

The relevant facts of the appeal T1691/17 can be summarized as follows.Two oppositions were filed against EP2459416B1.

  • Opponent 1 submitted 7 prior art documents (D11 till D71) and raised several grounds for opposition including lack of novelty and inventive step.
  • Opponent 2 submitted 6 prior art documents (D21 till D62) and also raised several grounds for opposition including lack of novelty and inventive step.
  • Proprietor filed 14 auxiliary requests in time before oral proceeding and an auxiliary request 15 a week before the take place of the oral proceeding.
  • At oral proceeding, the main request of the proprietor was considered as not fulfilling the EPC. The Proprietor filed a new auxiliary request 16, replacing auxiliary request 1 on file, based on a new claim 1 modified during oral proceeding by introducing some features from the description.
  • Auxiliary request 16 was further modified in the course of the oral proceeding by adding more features from the description resulting in a further auxiliary request 17.
  • Opponent 1 raised against that last auxiliary request 17 a novelty objection based on D11 and inventive step objections based on D11 alone or D11 + D21
  • Opponent 2 raised against that last auxiliary request 17 a novelty objection based on D12 and inventive step objection based on D22 + D32.
  • The European patent was finally maintained by the Opposition Division based on that auxiliary request 17.

An appeal was filed against the decision of the opposition division based on the following grounds.

  • Novelty objection based on D32;
  • Several inventive step objections based on D32 + D12, D32 + D21 and D21 alone.

At the oral proceedings, the Board of Appeal considered those attacks as “new alleged facts” and exercised its discretion pursuant to Art. 12 (4) RPBA not to admit the novelty attack based on D32, as well as all inventive step attacks. The reason put forward by the Board was that those attacks against the last filed auxiliary request 17 had not been raised in the opposition proceedings. The decision was taken without analysing any of the new attacks in substance.

If the procedure as outlined above should become the rule for Boards of Appeal then this will inevitably have clear consequences on the way oral proceedings before the Opposition Division will be conducted. Indeed it is often difficult to well appreciate, in the rather very short time left at oral proceeding in oppositions, which of the attacks may be the best once the proprietor has filed a new auxiliary request – particularly when it is based on some amendment adding features taken from the description. And the opponent will then have no other choice than to raise all possible meaningful attacks prior to the closure of the proceedings before the Opposition Division. In the present case, it would have been simply safer if any possible novelty attacks as well as inventive step attacks would have been raised. This would mean here that up to 12 novelty attacks (one document was used by both opponents) and almost 80 inventive steps attacks would have had to be made! The duration of the oral proceeding would then have been extended by quite some more hours considering that each attack may take a minimum of 5 to 15 minutes! I highly doubt that this is in line with some procedural economy.

In this context it is instructive to have a look at the explanatory remarks to the new Art. 12 (2) RPBA 2020$FILE/RPBA_for_user_conference_en.pdf. There is explained how the word “objection” as used in Art. 12 (2) RPBA 2020 should be understood i.e. which objections should finally be admissible on appeal. It does not refer only to a ground for opposition but should also cover what is sometimes referred to by Boards or parties as a “line of attack”. Present reported case may be just an example how appeal can be “limited” by the Board of Appeal in line with those explanatory remarks to the new RPBA. All that raises also the question how new attacks have to be classified i.e. as new facts, objections, arguments or evidence. As we have seen, in present case the Board of Appeal has considered the new lines of attacks as new facts while it would seem more appropriate to treat them as new arguments. Such a distinction is not purely academic but may have a clear consequence if one follows case law T 668/16Author thanks M. Thesen for the indication of that case law together with some discussion about the possible difference between arguments and facts or evidence the EPC still makes.. There is clearly stated that Art. 114 (2) EPC (defining subject-matter the EPO may disregard) refers only to facts and evidence but not to arguments. It is the more astonishing that Art. 12 (4) RPBA 2020 does not make any such difference!

It seems to the author also important to keep in mind how appeals in the different member states are processed. It is understandable if some discrepancy is present between general procedures of the EPO Board of Appeal and those from corresponding Boards of Appeals of the member states. However, what if the evolution of the practice of the new rules of the EPO Board of Appeal goes in a clearly opposite direction from that of the Board of Appeals of some member states? This is particularly striking considering that the Bundespatentgericht acting as the appeal instance for opposition procedures in Germany is obliged to even admit new grounds of oppositionBGH, X ZB 1/16, Ventileinrichtung; In this case law was decided by the Federal Court of Justice (Germany) that the appeal is a fully instance where the substance of the case should be reassessed, see paragraph 37.. By the way, a similar procedure seems to be applied by the Boards of Appeal of the EUIPO for whom an appeal constitutes a second instance which is called upon to reassess the substance of a case, without any restrictionJudgement of 13 March 2007, OHIM v Kaul, C-29/05, EU:C:2005:29, see paragraph 36.. A stricter approach of the appeal procedure, as the EPO Board of Appeal may now possibly apply, allowing to diminish the time appeals may take is welcome. However, this should by no means be to the detriment of the quality of the appealSee also „Get your Act Together“ from M. Thesen, epi Information 03/2019, 8..

For the sake of completeness, it should be added that in the explanatory remarks at Art. 12 (2) RPBA 2020 is also indicated that the Enlarged Board of Appeal decisions G9/91 and G10/91 continue to apply. If really so, then the Board of Appeal should nevertheless continue to consider already available information which prima facie would seem to prejudice the maintenance of the opposed European patent.

Finally, if the presented case is not an exception but really symptomatic of some very strict approach applied by the EPO Board of Appeal, and the author’s assessment about prima facie relevancy of prior art already on file is correct, then it seems to the author legitimate to ask how the community may possibly react if patents are maintained on appeal despite prima facie relevant prior art on file at opposition not even being examined on appeal only based on some procedural reasons? This could eventually undermine the credibility of the whole EPC system.