04/07/2022
We were recently involved in a EPO opposition in which a new inventive step attack was raised for the first time in oral proceedings. The inventive step attack was based on prior art documents that had already been admitted into the proceedings. But we were able to successfully argue that the new attack filed by the opponent relied on new, late filed facts. In particular, the new inventive step attack relied on passages of a cited document that had not previously been relied on, and used that document as a starting point for inventive step for the first time. So the Opposition Division had discretion to not admit the new attack, primarily on the basis that it was not prima facie relevant. That is what they did.
This experience highlighted the need to be clear about the differences between evidence, facts, objections and arguments in proceedings before the EPO and the EPO Boards of Appeal.
Crucially, arguments are treated differently to facts, objections and evidence, both in first instance proceedings and in appeal proceedings.
G 4/92 established that, in proceedings before the EPO, new arguments can be brought in at any time. This was affirmed in T1914/12, where it was stated that the Board of Appeal must admit new arguments and has no discretion available to not admit them.
However, new facts that are late filed in opposition proceedings may be admitted only at the discretion of the opposition division. Similarly, facts that are raised for the first time in appeal proceedings may be not admitted at the discretion of the Board of Appeal.
The EPC does not contain a definition of the terms ‘fact’ and ‘argument’, but Article 114(1) EPC (in its English version) distinguishes facts from evidence and arguments. The Rules of Procedure of the Boards of Appeal (RPBA) also distinguish between objections, facts, evidence and arguments.
In G4/92 the Enlarged Board of Appeal considered that new arguments “constitute in principle reasoning relied on in support of the pleas of law and fact already put forward” (see paragraph 10 of the reasons).
A more detailed discussion of the distinction between facts, evidence and arguments can be found in T1914/12 . After a review of the case law, T1914/12 includes the following summary.
“The common meaning of the words and their use in the jurisdictional context leads to a distinction between the terms “fact” and “argument”. A “fact” can be understood as factual (or allegedly such) or a circumstance on which a party bases its claims, whereas an “argument” would refer to a proposition that a party bases on one or more facts and that supports the plea it puts forward.
For example, where a patent is opposed on the basis of novelty and the opponent argues that claim 1 was not new on the basis of disclosure of paragraph [0017] of document D1, the ground relied on is the lack of novelty (i.e. the claim that the subject matter of the claim is included in the prior art). This ground is based on one or more arguments (broadly speaking, the argument), in this case the argument that the subject matter of the claim is disclosed in paragraph [0017] of D1. A translation or copy of this document is filed as evidence. The argument is based on the fact that the text of that paragraph constitutes. It includes, for example, the argument (in the narrow sense) that the skilled person, having regard to his general knowledge, would understand that characteristic X that is not explicitly disclosed in paragraph [0017] is implicitly disclosed in it.”
A more recent decision, J14/19. decided under the new RPBA makes it clear that reliance on a new passage in a document already in proceedings may be a new allegation of fact and therefore an amendment to the appeal case. This was the situation we faced. J14/19 states:
“In the Board’s view, the mere reference to a specific passage of a document – that is to say, to part of a piece of evidence proving a particular fact – must be regarded as a factual element of an argument. Whether an argument containing a factual element constitutes an amendment within the meaning of Article 12(4) RPBA 2020 or an amendment to the complaint within the meaning of Article 13(1) and (2) RPBA 2020 must be assessed – applying the respective reference point (see point 1.2 of the reasons above) – in the overall context of the circumstances of the individual case.
The mere fact that a party has already introduced a particular document into the appeal proceedings does not mean that its entire content forms part of the appeal of those parties. If a party relies in its further submissions on passages of such a document other than those previously used, this may therefore have the effect of changing the grounds of appeal (see T 482/18, point 1.2.5 (e) of the reasons). In the Board’s view, in principle, both a new combination of factual elements (e.g. the choice of a different document or a different passage of a document as a starting point for the assessment of inventive step) and a new combination of factual and legal elements (e.g. the reference to a text passage already discussed in a different legal context) constitute an amendment to the appeal submissions. The mere refinement of an already existing line of argument must be distinguished from a change in the grounds of appeal (see T 247/20, point 1.3 of the Reasons).”
This reasoning does not only apply to prior art documents. In another recent decision, T0250/19, a new allegation of added subject-matter under Art 123(2) was found to rely on new facts. Even though the original application was already “available” at first instance, that was not considered to mean that all of its content formed part of the factual evidence presented, or produced, by the appellant during the proceedings at first instance.
So as a patentee faced with new arguments from an opponent, you should be on the lookout for any new facts that the opponent might be sneaking into the arguments, as you may be able to argue that they should not be admitted into the proceedings. As an opponent, you should be careful to reference at the earliest stage all parts of a document that you might later want to rely on, so that you later have all the ‘facts’ available to you.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
