For the sake of the argument

As I have already mentioned here, one reason why I do not often comment on decisions from the Boards of appeal of the EPO on this blog is that any interesting decision that comes out is instantly shot at by all good bloggers around the place before I even get a chance to draw my metaphorical gun.

So, sorry folks, no breaking news from me today, as Laurent Teyssèdre has already been here, as well as others.

But I could not let this one decision T 1914/12 go without a comment or two.

First, because it is highly interesting. Second, because it is in French (so, maybe some non-French speaking colleagues would benefit from further highlights). Third, because I was involved in the case at hand in the first instance proceedings, so this one brings back a number of memories.

The catchword of the decision can be translated as follows:

Boards of appeal do not have any appraisal power with respect to the admissibility of late arguments which are based on facts that are already part of the proceedings (decision diverging from T 1621/09).

A brief presentation of the facts of the case will probably suffice, before summarizing the very thorough legal discussion in the decision.

The patent at stake is entitled “Method of adhesively bonding a strip of flexible fabric to a substrate“. It was opposed after grant and revoked by the opposition division, for lack of inventive step (as well as extension of subject-matter as far as some of the auxiliary requests are concerned).

In the course of the appeal proceedings, the opposition was withdrawn, and the patent was transferred to the previous opponent. Not that this circumstance is really critical.

The key issue is that, for the first time on appeal, the new patent proprietor identified a further distinguishing feature relative to one of the main cited prior art references.

In a written communication, the Board expressed the preliminary opinion that this was a late argument and that its intention was not to admit it into the proceedings. But the Board, for once presided by the legal member, later changed its mind and came to the opposite conclusion. As a result, the first instance decision was set aside, and the case remitted to the first instance for further prosecution.

But before reaching this conclusion, the Board performed a very thorough analysis of the law pertaining to late facts and arguments.

A fancy EPO appeal clock.

The starting point for the discussion is article 13(1) of the Rules of procedure of the Boards of appeal (RPBA), per which:

Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. 

So the question is: does the discretionary power of the Board apply to a situation such as the one at hand, where a new distinguishing feature is identified by the proprietor at a late stage?

As a first step (section 7.1 of the reasons), the Board reviewed in great detail the notions of “facts” and “arguments” and their respective definitions, based on the common understanding of the terms, of the legal understanding of the terms, and on the specific use of the terms in the EPC and case law.

Clearly distinguishing between facts and arguments is not just a matter of hair-splitting. Depending on whether a late submission is viewed as a fact or an argument, the fate of the submission may differ – even in first instance.

As a side note, in one opposition I have handled, a new inventive step attack based on a timely filed document only later identified as a possible closest prior art document was considered by the opposition division as pertaining to a “new fact” and not merely a “new argument” and it was thus not admitted into the proceedings. The Board set aside the first instance decision – but I don’t know yet if this point will be discussed in the reasons or not.

Anyway, the definition offered by the present Board (reasons, 7.1.4) is the following (in my own translation as always):

A “fact” can be understood as a factual (or allegedly factual) element or a circumstance on which a party bases its case, whereas an “argument” designates a proposition that a party bases on one or more facts and which supports the case that it puts forward. 

The Board then gave the example of a lack of novelty attack:

  • The party’s case (“moyen” in French) is that the claimed subject-matter is comprised in the state of the art.
  • One argument is e.g. that the subject-matter is disclosed in paragraph [0017] of D1.
  • Another argument is e.g. that the skilled person understands the paragraph in a certain manner, in view of common general knowledge, and thus views a certain feature as implicitly disclosed.
  • The textual content of the paragraph is a fact.
  • The copy of the document or of its translation is a piece of evidence.

As a next step, the Board addressed the central issue of whether late arguments can be disregarded or not.

Here, the first interesting remark is that the text of the EPC is not the same in the three official languages.

The English version of article 114(1) reads:

In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 

Note the term “arguments” here. But the French version is in fact quite different, as it solely refers to “moyens invoqués” and “demandes présentées“. I would tend to translate the general term “moyens invoqués” by “the party’s case“. The German version does not specifically mention arguments either.

The Board noted that the English version seems to more accurately express the intentions of the drafters of the EPC (is that generally the case? the Frenchman asks), and therefore adhered to this English version in the rest of the reasoning.

Now the key part of the reasoning is that the English version of the second paragraph of article 114, on which the discretionary power of the EPO to disregard late submissions is based, does not refer to arguments:

The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned. 

This is in contrast to the first paragraph mentioned above, which deals with examination of the EPO’s own motion.

Based on the difference between the two paragraphs, the Board concluded that the discretionary power of the EPO is strictly limited to facts and evidence and does not extend to arguments.

Now going back to article 13(1) RBPA, there is a reference here to an “amendment to a party’s case“, which is not very explicit. But the notion of a party’s case is further defined in article 12(2):

The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. […]

So, on the face of it, it can be surmised that article 13(1) RPBA, via its implicit reference to article 12(2), empowers the Board with the right not to admit a late modification of the arguments of a party on appeal.

But, reviewing the Travaux préparatoires for the current version of the RPBA, the Board found that a proposed article 13(1) containing an explicit reference to arguments was rejected in the drafting process.

Thus, the Board held, the intent seems to have been in fact not to encompass arguments within the purview of article 13(1). See section 7.2.1 of the reasons.

Then, the Board reviewed the relevant case law in detail (section 7.2.2 of the reasons), and found a number of decisions pursuant to which arguments are not subjected to the Boards’ discretionary power.

But then there are T 1069/08 and above all T 1621/09, which decided otherwise. Especially in T 1621/09, an analysis of the travaux préparatoires was performed but the deletion of the word “arguments” in the drafting process of new article 13(1) was not noted.

In the wake of these two decisions, the Board counted 17 later decisions which relied on the principles set out in T 1069/08 and T 1621/09 without questioning them. A couple of recent decisions have however decided the other way around.

As a conclusion, the Board expressed its disagreement with the approach of T 1069/08 and T 1621/09 (section 7.2.3 of the reasons).

The final reason put forward by the Board for such disagreement is that the RPBA should not “lead to a situation which would be incompatible with the spirit and purpose of the Convention” (article 23), which would precisely be the case if article 13(1) RPBA were to be interpreted as encompassing arguments, although article 114(2) EPC, which prevails, does explicitly not refer to arguments, among the late submissions which may be disregarded.

One first question immediately comes to mind: is this question ripe for a referral to the Enlarged board of appeal?

After all, there are a number of diverging decisions, it seems. I guess the answer may depend on whether the Boards which issued T 1069/08 and T 1621/09 will stand their ground or change course.

The second question that I have is: what about the upcoming revised version of the RPBA?

A few months ago, there was a public consultation at the EPO on a draft. I do not know where this project stands right now. But, for what it is worth, there was a new paragraph 2 in article 12 in this proposal, which reads:

In view of the primary object of the appeal proceedings to judicially review the decision under appeal, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

Beside the fact that there is a new concept here (namely “objections“), this provision seems to introduce a limitation to what kind of arguments a party is allowed to file on appeal – namely, those on which the decision under appeal was based.

If one follows the reasoning of T 1914/12, wouldn’t this proposed provision breach article 114 EPC?


CASE REFERENCE: T 1914/12, Board 3.2.05, June 13, 2018, Gaztransport et Technigaz.

Leave a Reply

Your email address will not be published.

This site uses Akismet to reduce spam. Learn how your comment data is processed.