5.10.4 New arguments and lines of attack not admitted

In some decisions it was held that new arguments first put forward at the oral proceedings without any reasonable explanation or justification were to be regarded as late filed and not admitted into the proceedings (T 1069/08, T 775/09, T 1621/09, T 810/12).

In T 1621/09 the board, in the exercise of the discretion under Art. 13 RPBA 2007, decided however not to allow the appellant to amend its case, inter alia because the new argument amounted to a new way of putting the appellant's case on novelty and was raised at the last stage of the appeal, namely during oral proceedings.

In T 1069/08 it was only at the oral proceedings that the appellant (opponent) asked the board to be allowed to present its arguments on the lack of obviousness of the claimed subject-matter. The board refused this request, pointing out, among other things, that the appellant could, and indeed should, have considered that the board might reach the same conclusion as the opposition division as regards Art. 100(b) EPC and, if it wished the board to consider a new argument, should have set it out, at the very latest, in its reply to the board's communication.

In T 1761/10 the board also decided not to admit the new inventive step attack submitted at oral proceedings. The appellant's attack raised complex new issues and oral proceedings would have had to have been adjourned in order to give the board and the respondent sufficient time to address these issues (see also T 1226/12, T 2602/12 and T 1744/14).

In T 1019/13 a new inventive-step attack was made for the first time during the oral proceedings before the board. In the written proceedings, the opponents made more than ten different inventive-step attacks based on various different combinations of documents. In such a situation, the proprietor could not be expected to extend its preparation to cover yet more inventive-step attacks, based on new combinations of documents, which opponents might make during the oral proceedings.

In T 647/15, by choosing to keep silent until the oral proceedings and make its arguments based on documents D10 and D11 only then, the opponent had surprised the board and the other parties, thereby undermining those parties' right to comment as appropriate in an adversarial procedure.

In T 603/14 the board exercised its discretion not to consider the late-filed objection of lack of inventive step in view of D1 and D3. The appellant raised this objection for the first time in the oral proceedings before the board. The documents formed part of the appeal proceedings. However, they had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step was to the board a new fact. The appellant did not present a convincing justification for the late submission of this alleged new fact. The board held that admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party could not be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art; see also T 181/17.

Also in T 775/09, T 1098/11, T 2091/12, T 46/13, T 221/13, T 419/14, T 988/14, T 73/15, T 392/16, T 1684/18 the board did not admit the new lines of attack on inventive step.

In T 1890/13 document D28 was initially filed with the notice of opposition. However, it was discussed neither during the oral proceedings before the opposition division nor in the impugned decision. It was only at the oral proceedings before the board that the appellant argued for the very first time that D28 was extremely relevant for the assessment of inventive step. The board held that this new line of argument was submitted at a very late stage in the overall proceedings and refused the appellant's request that D28 be introduced into the appeal proceedings under Art. 13(1) RPBA 2007, for the following reasons: the late substantiation of D28 was not an appropriate and immediate reaction to unforeseeable developments in the proceedings, the teaching of D28 was not prima facie more relevant than the other prior art documents on file; admitting into the appeal proceedings such a new line of argument based on D28 would run counter to the principle of procedural economy and fairness.

In T 1381/15 the board identified a bundle of new (pieces of) evidence and new (allegations of) facts used to formulate a new objection of lack of sufficiency of disclosure (a new attack). However, it did not consider this specific objection to be based on facts already in the proceedings (see T 1914/12). The newly raised objection, based on alleged discrepancies between the application at issue and the priority documents, was therefore not merely an argument, which could be made at any time. In view of the extremely late stage reached in the proceedings and the complexity of the new objection, the board exercised its discretion under Art. 13(1) RPBA 2007 and Art. 114(2) EPC not to admit this new objection into the proceedings.

In T 47/18 it was only after the parties had been summoned to oral proceedings that the opponent raised objections under Art. 84 and 123(2) EPC. The board stated that the objections in question also did not merely constitute a new argument (T 1914/12) because they went beyond submissions serving to underpin the facts, evidence and grounds filed in good time. Rather, they were based on new legal grounds (G 4/92, OJ 1994,149) that had not been addressed before in the appeal proceedings. The board pointed out there was no cogent reason to raise these objections at such a late stage of the proceedings, i.e. only about two months before the oral proceedings before the board.

In T 1167/13 the appellants had raised in their statement of grounds of appeal an objection under Art. 100(b) and 83 EPC that the person skilled in the art could not carry out the invention over the whole range claimed. The board concluded that the objection had been raised for the first time in the statement of grounds of appeal and amounted to an alleged new fact within the meaning of Art. 114(2) EPC and Art. 12(4) RPBA 2007 rather than an argument of the sort that could be presented at any time during the proceedings.