The opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.
In their written statement setting out the grounds of appeal, the opponents only invoked lack of inventive step under A 100(a). The grounds of lack of novelty and of added subject-matter, which were not substantiated in the statement setting out the grounds of appeal (filed on October 6, 2008), were invoked for the first time with letter of 11 August 2009.
The Board did not admit these grounds:
[2.1] Article 12(2) RPBA stipulates that
“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”.
This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses.
In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III “Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung” only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised.
It is only with the letter dated 11 August 2009 after the reply of the [patent proprietor] that the [opponents], referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subject-matter and lack of novelty.
It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own.
The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA.
[2.2] Article 13(1) RPBA states that
“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”.
In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.
For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 was concerned with the feature of claim 1 “when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction” […]. The submission of the [opponents] in this respect focussed on the OD’s assertion in the decision under appeal , according to which the application as originally filed discloses that “the backseat [i.e. seat back] describes the trajectory of an arch”. However, claim 1 is not concerned with the trajectory of the seat back and therefore the [opponents’] objection appears to be misconceived.
This also applies to the further objection under A 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subject-matter from “a privacy and support apparatus” to “an airplane”. Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty.
The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.
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