Key points
- The Board holds an inventive step attack filed with the Statement of grounds inadmissible under Art. 12(4) RPBA 2007.
- Which is interesting because Art. 12(4) RPBA 2007 refers to "the power of the Board to hold inadmissible facts, evidence or requests".
- So, is an inventive step attack a fact, evidence, or a request?
- The new attack is based on D1. During the opposition proceedings, the parties considered D10 to be the closest prior art.
- "According to the minutes of the oral proceedings before the opposition division, the opponent explicitly renounced raising an objection starting from D1 as the closest prior art against this first auxiliary request".
- The Board considers the claims to be inventive.
T 1055/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t171055eu1.html
6. Inventive step
6.1 Consideration of the reasoning based on D1 as the closest prior art
6.1.1 Claim 1 at issue corresponds in substance to claim 1 of the first auxiliary request upheld by the opposition division, combining the features of granted claims 1, 4 and 5.
6.1.2 During opposition proceedings, the parties considered D10 the closest prior art with respect to this then pending first auxiliary request (point 16.4.1 of the impugned decision).
6.1.3 In its statement of grounds of appeal, the opponent used document D1 as the closest prior art.
6.1.4 While the opponent had cited both D1 and D10 as possible closest prior art for the main request pending before the opposition division (point 15.3.1 of the impugned decision), it decided to argue lack of inventive step of the then pending first auxiliary request only in view of D10 (point 16.4.1 of the impugned decision, as indicated). According to the minutes of the oral proceedings before the opposition division, the opponent explicitly renounced raising an objection starting from D1 as the closest prior art against this first auxiliary request (point 4.3 of the minutes of oral proceedings).
The first auxiliary request under consideration in the impugned decision had only been filed during the oral proceedings before the opposition division, but its claim 1 was identical to claim 1 of the first auxiliary request filed on 18 November 2016 in preparation for these oral proceedings, and was therefore known to the opponent.
6.1.5 Under these circumstances, the opponent's objection starting from D1 as the closest prior art should have been raised before the opposition division. In its statement of grounds of appeal, the opponent sets out why, in its opinion, D1 should be considered the closest prior art but does not provide any reason why this had not been raised during the opposition proceedings.
6.1.6 Hence, the board decided to disregard the reasoning based on D1, using its discretion under Article 12(4) RPBA 2007 in conjunction with Article 25(2) RPBA 2020.
source http://justpatentlaw.blogspot.com/2021/03/t-105517-attacks-under-art124-rpba-2007.html
