Key points
- In the present case, the opponent argues that their new attack complies with G 10/91 hn.2 and G 7/95, i.e. that it is not a fresh ground of opposition and hence is admissible (the English version of G 10/91 is G 9/91).
- The Board finds that Art. 12 and 13 RPBA and G 10/91 exist cumulatively and independently of each other.
- The new attack at issue is presented for the first time during the oral proceedings before the Board, but I think the general question pertains to submissions at any stage of the appeal proceedings.
- The Board in translation: " In appeal proceedings, new submissions are restricted not only by the case law of the Enlarged Boards of Appeal in G 10/91, G 1/95 and G 7/95 regarding new grounds for opposition, but also by the possibility, given to the boards in Article 114(2) EPC and the Rules of Procedure not to admit late submissions. These restrictions are independent and cumulative."
- As a question, is hn.3 G 10/91 based on Art. 114, or on some other article of the EPC (or not at all on an article of the EPC0? If hn.3 of G 10/91 is based on Art. 114 EPC as well, does that mean that there are two complexes of case law based on the same provision and both dealing with the admissibility of new attacks?
- To cite G 9/91, r.18: " Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage."
- The present Board: " The provisions of the RPBA 2020 on late filing elaborate Article 114(2) EPC in a way that is fundamentally binding for the boards (Article 23 RPBA 2020). This also includes the determination of procedural stages in the complaints procedure, during which the delay rules are to be applied with varying degrees of severity."
- The new inventive step attack is not admitted. The inventive step attack was based on the same documents cited previously as novelty-destroying, which would be enough under G 9/91 as held in G 1/95 r.7.2
- The Board is of the view that at least the OD's decision to reject the opposition, enabled the opponent to present the inventive step attack with the Statement of grounds.
- " In the appeal proceedings, there is already a first-instance decision which, from the point of view of the opponent, was usually made taking into account the counter-arguments of the patent proprietor. At this stage of the proceedings at the latest, it is therefore regularly possible - and also usual - as an opponent to first argue that the disclosure content of a certain document is novelty-damaging and then, in the event that the Board of Appeal should come to a different view in this regard, supplementary arguments on the basis of the same document claiming lack of inventive step. That this is possible and customary is also shown in the present case by the behavior of the appellant itself, who raised both novelty objections and objections of lack of inventive step in the grounds of appeal based on documents D1, D7, D9 and D12. The fact that the appellant, based on documents D4 and D5 and fully aware of the decision under appeal - in which these documents were not considered to be novelty-damaging - only raised novelty objections in the statement of grounds of appeal cannot be to its advantage."
EPO T 1042/18 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/08/t-104218-art-12-and-13-rpba-and-g1091.html
