Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T2866/18 vom 04.10.2022

In the case underlying T 2866/18 the opponent had raised lack of novelty objections against claim 1 of the main request on the basis of documents D10 to D13 as well as an inventive step objection starting from D13. In the decision under appeal, the opposition division had considered claim 1 of the main request to lack novelty over D10 and D11. In its reply to the statement of grounds of appeal of the patent proprietor, the opponent did not raise any inventive step objections against the main request, but simply announced that it would comment on inventive step during the oral proceedings before the board if the board did not accept its view on novelty regarding claim 1. At the oral proceedings, the board confirmed its preliminary opinion outlined in its communication under Art. 15(1) RPBA 2020 and concluded that the subject-matter of claim 1 was novel over D10 and D11. Subsequently, for the first time in the proceedings before the departments of both instances, the opponent raised inventive step objections starting from either document D10 or D11 in combination with any of documents D2, D5, D6 or D13. The board noted that, since the opponent's inventive step objections were not contained in its reply to the statement of grounds of appeal, raising them for the first time at the oral proceedings before the board constituted an amendment to the opponent's appeal case under Art. 13(2) RPBA 2020 (see J 14/19), the admittance of which was subject to the board's discretion. Whether or not these objections stayed within the same overall "factual and legal framework" was not decisive for the purpose of determining what constituted an amendment of the appeal case under the RPBA 2020 (see T 2360/17). It could, however, play a role in the board's exercise of discretion under Art. 13(2) RPBA 2020 (see T 574/17 and T 2920/18). The board further observed that the question of whether there had been an amendment to a party's appeal case under the RPBA 2020 had to be distinguished from the question of whether a fresh ground of opposition had been raised. Whether the documents taken as starting points for new inventive step objections were previously used for objections regarding a lack of novelty had no bearing for determining whether these inventive step objections constituted an amendment to the opponent's appeal case under Art. 13(2) RPBA 2020 (see T 1042/18; see also T 1179/17, T 1816/17, T 2161/18 and T 151/19). The board further noted that, in any case, combining D10 or D11 with new documents went beyond the "factual and evidentiary framework" of the previous novelty objections within the meaning of T 184/17. The opponent put forward that its inventive step objections raised at the oral proceedings were prima facie relevant. The board considered it appropriate in the present case to conduct such a prima facie assessment, although this was not a necessary precondition in order to come to the conclusion that there were no exceptional circumstances under Art. 13(2) RPBA 2020 (see T 574/17). The board concluded that none of the inventive step objections were prima facie relevant and consequently did not admit them into the proceedings pursuant to Art. 13(2) RPBA 2020.