l) New objection based on documents already on file – new arguments with factual elements 

The board in T 482/18 disagreed with the finding reached in T 1914/12 that facts apparent from the patent documents on the case file (here: disclosure of "rod-shaped" in the application as filed and clarity of that term) were automatically at issue on appeal without having been expressly asserted. That position was at odds with the nature of judicial proceedings, such as those before the EPO boards of appeal, which were of the kind proper to an administrative court, since such proceedings involved deciding on a factually supported case and so depended on the assertion of facts. On the board's interpretation of "argument", see chapter V.A.4.2.2n).

The Legal Board in J 14/19 shared the view taken by the board in T 482/18. Observing that late-filed submissions with factual elements could be disregarded on the basis of Art. 114(2) EPC, it held that the simple fact that a party had already submitted a particular document on appeal did not mean that its entire content formed part of its appeal case. If it later relied on parts of that document other than those it had previously cited, that could amount to amending its appeal case. It further found that both a new combination of factual aspects and a new combination of factual and legal aspects were as a rule to be treated as an amendment to the appeal case. Such an amendment had to be distinguished from a mere fine-tuning of an existing line of argument (as in T 247/20; see the abstract in chapter V.A.4.2.2m); on the Legal Board's interpretation of "arguments" within the meaning of Art. 12(2) RPBA 2020, see also chapter V.A.4.2.2n)).

In T 2796/17 the board held that the inventive-step objection to the subject-matter of claim 1 of the new main request (initially filed with the reply as auxiliary request 1) which the appellant, based on two documents already on file (O2 und O3), had raised for the first time at the oral proceedings was new as it involved new facts and supporting evidence. The appellant had not previously attacked the patentability of claim 1 of this request (which was a combination of granted claims 1 and 2) or attacked granted claim 2. The objection to the new main request raised under Art. 56 EPC on the basis of O2 was thus a new submission. The board refused to admit it under Art. 13(1) and 25(1) RPBA 2020 and Art. 13 RPBA 2007 and Art. 25(3) RPBA 2020 on the grounds that its late filing was not understandable and had not been justified by the appellant and that the objection not only involved a complex new set of facts but also appeared prima facie irrelevant.

In T 187/18 the board held that a new combination of documents (already cited as part of the appellant's inventive-step attack, but in different combinations) was not a mere elaboration on a previously pleaded line of argument, but a change to the party's case. The board then noted that, since the appellant had not identified any special reasons for the amendment to its case, the alleged prima facie relevance was not per se a consideration. Exercising its discretion under Art. 13(2) RPBA 2020, the board did not admit the new line of attack into the proceedings.

In T 1108/16 the respondent (patent proprietor) countered the inventive-step objection raised in the grounds of appeal only after receiving the communication under Art. 15(1) RPBA 2020, by submitting arguments as to why taking the cited prior-art documents together could not render the combination of features in claim 1 of its main request obvious. On the admissibility of this these late-filed arguments, it contended that they had to be regarded as a natural elaboration on arguments in its reply, which already included a detailed analysis of the documents' content from which it directly followed that their teachings were essentially incompatible. The board, however, pointed out that, especially in adversarial opposition-appeal proceedings, it was essentially bound in its assessment of the factual and legal circumstances by the case made by each of the parties. Accordingly, it was not – and could not be – up to it to piece together itself from that case arguments a party had not expressly set out in defence of its patent or in support of the relief it sought. The new submissions in this case had to be regarded as an amendment.

In T 1707/16 it was only at the oral proceedings before the board that the appellant (opponent) – for the first time in either the opposition or the appeal proceedings – raised the objection that the feature at issue in claim 1 of the main request was not disclosed in figure 9, whereas it had previously argued that claim 1 contained an intermediate generalisation as the feature at issue was inextricably linked to the remaining features of the embodiment of figure 9. The appellant argued that the new objection was not an amendment to its appeal case, but rather a further development of the argument raised in the statement of grounds of appeal. The objection was to the same feature and under the same legal provision (Art. 123(2) EPC); the only difference was the stage of the assessment of compliance with Art. 123(2) EPC. The board, however, considered that the question of whether or not figure 9 unambiguously disclosed the feature in question completely changed the framework of the discussion relating to Art. 123(2) EPC and therefore regarded it as an amendment to the party's case.