5.10.1 New arguments on appeal

Further information on "new arguments" is contained in chapter IV.C.4.6. More recent decisions on this term, taken in the context of the RPBA 2020, are reported in chapters V.A.4.2.2.l) "New objection based on documents already on file – new arguments with factual elements" and V.A.4.2.2n) "Submissions concerning the interpretation of the law".

Art. 12(2) RPBA 2007 provides that the statement of grounds of appeal should specify expressly all the facts, arguments and evidence relied on by the party. Art. 13(1) RPBA 2007 leaves it to the board's discretion to admit any amendments to a party's case after that.

The board in T 1621/09 held that, to the extent the Enlarged Board of Appeal's opinion in G 4/92 (OJ 1994, 149) dealt with the general admissibility of new arguments in appeal proceedings, it had to be regarded as having been modified by the amendments to the RPBA introduced with effect from 1 May 2003. In addition, the board examined whether or not new arguments first brought forward during oral proceedings but based on citations already in the proceedings could constitute an amendment to a party's complete case within the meaning of Art. 13(1) RPBA 2007. The board said they could, and concluded that the admissibility of such arguments was therefore prima facie a matter for the board's discretion. The boards in T 232/08, T 1069/08, T 1732/10, T 1761/10, T 433/11 and T 1847/12, came to similar conclusions.

The board in T 1914/12 held (contrary to T 1621/09) that the boards did not have any discretion when it came to the admissibility of late-filed arguments based on facts already in the proceedings. Invoking Art. 114 EPC, which in English referred to arguments (as well as to facts and evidence) in paragraph 1, but not in paragraph 2, it concluded that the discretion conferred by paragraph 2 did not extend to late-filed arguments and observed that this was in line with the pre-2011 case law (e.g. T 92/92, T 861/93, T 131/01, T 704/06, T 926/07 and T 1553/07). The board was unconvinced by the reasoning underlying T 1069/08 and T 1621/09. Their interpretation ignored the fact that Art. 114(2) EPC provided no justification for such discretion, as the older case law had held many times. In English at least, the EPC, and in particular Art. 114 EPC, treated facts and arguments differently. More specifically, Art. 114(2) EPC explicitly conferred discretion for late-filed facts but not for late-filed arguments based on facts already in the proceedings. The RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not. See also T 1359/14.

In T 1875/15 the board followed the finding in T 1914/12 that a board has in principle no discretion not to admit late-filed arguments. However, it also noted that if a late-filed objection included new allegations of fact, the board had, under Art. 114(2) EPC, the discretion not to admit it into the proceedings. The board held that the respondent's objection under Art. 100(c) EPC, which had been raised for the first time during the oral proceedings before the board, included not only legal but also factual (and technical) considerations, namely what the term "poly"-olefin" in the passage concerned meant. The respondent's allegation that it had to be read as "poly-alphaolefin", such that the corresponding feature in claim 1 as granted was not based on the application as filed, was not an argument but rather an allegation of a fact, namely, the fact that the skilled person would have interpreted the term "poly"-olefin" in this passage of the application as filed as to directly and unambiguously mean "polyalphaolefin". Therefore, the respondent's late-filed objection included a new allegation of fact. Thus, under Art. 114(2) EPC the board had the discretion not to admit the respondent's late-filed objection. The board held that this finding was in agreement with T 1914/12, T 635/14 and T 1381/15.

The board in T 482/18, commenting on T 1914/12 and T 701/97 when applying Art. 13 RPBA 2020, found that the boards in those cases seemed to have presumed that the content of the application as filed and of the patent as granted had to be treated as facts that all remained at issue at all times in the proceedings. It endorsed the view taken in T 1914/12 that Art. 114(2) EPC 1973 (Art. 114 EPC not amended when the EPC was revised) was not a basis for refusing to admit arguments and that the patent documents in a case file covered a – usually large – number of individual facts. However, it expressly disagreed with the position that all those facts were at issue on appeal automatically, i.e. without being explicitly asserted, and so could have legal implications at any time. It considered that position to be 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. If an appellant failed to assert the various facts relied on in time, they could be disregarded under Art. 114(2) EPC 1973.