4.6.1 New arguments – definition

The Enlarged Board of Appeal defined "new arguments" in opinion G 4/92 (OJ 1994, 149) as being not new grounds or evidence, but reasons based on the facts and evidence which have already been put forward (e.g. T 131/01, OJ 2003, 115). In T 604/01, facts in the legal sense are to be understood as the circumstances and incidents of a case, looked at apart from their legal bearing. In T 926/07 the board stated (with reference to T 92/92) that facts are alleged circumstances/matters which must, where applicable, be substantiated by evidence. Arguments, by contrast, are the expositions generated when the law is applied to facts and evidence filed on time. Arguments based on facts filed on time were therefore to be admitted at every stage of the opposition and opposition appeal proceedings. See also chapter V.A.4.2.2l) to V.A.4.2.2n). on the late submission of new arguments in appeal proceedings.

Taking a similar line in T 861/93, the board ruled that decisions referred to by a party in support of its arguments were never citations which, under Art. 114(2) EPC 1973, could be rejected as being late. Decisions to which a party referred in support of its arguments should be regarded as part of these arguments and should not be rejected as being filed late (doubted in T 1914/12).

In T 131/01 (OJ 2003, 115) the board considered that the reasons why, in the opponent's view, the skilled person would obviously have arrived at the claimed subject-matter with the aid of a particular DE citation constituted a new argument. This document had been cited and analysed in the notice of opposition and its content therefore did not constitute new facts. The board in T 2238/15 similarly took the view that a newly submitted objection of a lack of inventive step over two citations already on file was at best a new argument. Since the contents of those citations, in so far as they were relevant for claim 1 as granted and the additional features according to the first auxiliary request, had already been analysed in the notice of opposition, they were not new facts.

The board in T 1448/09 observed that, while reference to common general knowledge could be an argument, whether that knowledge actually existed was a question of fact.

According to T 1553/07 arguments also included statements intended to rebut facts which had already been put forward (including evidence). In oral proceedings before the opposition division, the patent proprietor explained why, in its opinion, the public prior use claimed by the opponent had not been established beyond all doubt by the evidence which had been submitted late. The board did not regard the disputing of the prior use claimed by the opponent as constituting the presentation of new facts.

In T 710/15, the opponent raised during oral proceedings before the opposition division a new objection under Art. 100(c) EPC. This ground for opposition had been previously validly invoked. The board held that in the case at issue the new objection did not introduce new facts or evidence, but merely a new argument.

According to the board in T 1914/12, a "fact" was to be understood as a piece of (allegedly) factual information or a circumstance on which a party based its case, whereas an "argument" was a contention that it based on one or more such facts and that supported the ground it was invoking. To illustrate its point, the board gave the example of an opponent objecting that a claim lacked novelty over the disclosure in a particular paragraph of a prior-art document: the ground invoked would then be lack of novelty (i.e. an assertion that the claimed subject-matter was part of the prior art), and that ground would be based on the argument that the claimed subject-matter was disclosed in the cited paragraph of the document; the fact on which that argument, meanwhile, was based would be the document's wording, a translation or copy of the document being filed as (a piece of) evidence. The board also remarked that, while a distinction was sometimes made in the case law between an "argument" and a "line of argument", it could see no legal basis in the EPC for treating an isolated argument differently from a set of arguments.

In T 2053/13 the appellant's (opponent's) inventive step assessment starting from the teaching of document D3 was first presented on the day of the oral proceedings before the opposition division. Document D3 itself had been filed with the notice of opposition; it was however not presented as the closest prior art, but mentioned only in a footnote for a marginal issue. The board recalled that according to G 4/92 (OJ 1994, 149), arguments are reasons based on facts and evidence which have already been put forward. The board considered that rather than merely presenting an additional argument in support of a chain of reasoning already known in an established factual context, the appellant had changed its case. The submission in question introduced a whole new chain of reasoning based on the allegation that document D3 was a promising springboard to the invention as claimed. Thus, the appellant's submission related to a new alleged fact. Filing a piece of evidence did not mean that any alleged fact or objection potentially derivable from that evidence was also introduced into the proceedings.

In T 1875/15, which concerned the admission of an objection under Art. 100(c) EPC raised for the first time during oral proceedings before the board, the board endorsed 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 discretion under Art. 114(2) EPC not to admit it into the proceedings (see also J 14/19; for more details see chapter V.A.4.2.2l) to V.A.4.2.2n)).