Introduction of common general knowledge without evidence by the BoA

The Opposition Division revoked European patent EP 2200282B1 because of lack of novelty of the main request, lack of inventive step of the first auxiliary request, and inadmissibility of the second auxiliary request. The patent proprietor filed an appeal, arguing the novelty of the main request and in addition submitted further auxiliary requests.

In the Preliminary Opinion, the Board indicated that they did not agree with the Opposition Division’s finding that the independent claims of the main request lacked novelty over D1 or D4. Instead, they considered the claims to lack inventive step over the disclosure of D1 combined with the common general knowledge of the person skilled in the art.

The appellant argued that it should not be allowed for the Board to i) examine inventive step of the main request (as only novelty was objected to), and ii) use common general knowledge as this would introduce “new facts”. More precisely, regarding the latter, the appellant made the following final request (the respondent had informed the board that it would not be attending the oral proceedings):

“If the board tended not to grant any of the claim requests, the following question be referred to the Enlarged Board of Appeal: "In inter partes proceedings, is the board allowed to introduce new ex officio facts and evidence which prejudice maintenance of the patent?”

The Board concluded that they were entitled to examine lack of inventive step using common general knowledge of the person skilled in the art for the following reasons.

The appellant had argued that the case should be remitted to the Opposition Division. However, pursuant to Article 111(1) EPC “the Board of Appeal shall decide on the appeal and may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.” As remittal of the case would lead to unreasonable delay in its final settlement, the Board considered itself competent to examine the subjectmatter of the claims. Moreover, “[r]emitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA.”

The appellant had further argued that the Board would not be allowed to examine inventive step, as claim 1 of the main request had only been opposed to on the ground of novelty. The Board confirmed its competence to examine inventive step by replicating a paragraph of section IV.C.3.4.2 of the Case Law Book:

“If a patent has been opposed on the grounds of lack of novelty and lack of inventive step and if only the ground of novelty has been substantiated within the opposition period, a specific substantiation of the ground of lack of inventive step is not necessary. Under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since - given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art - this would contradict the reasons in support of lack of novelty. Therefore, the objection of lack of inventive step does not constitute a fresh ground for opposition and can therefore be examined in the appeal proceedings without the agreement of the patentee.”

The appellant agreed that in this case the Board was entitled to examine the ground of inventive step, but asserted that the examination by the Board should be “limited to the facts” as introduced by the respondent before the Opposition Division.

The Board considered that “[t]his was a point of law of fundamental importance. The revised version of the RPBA expressly introduced in Article 12(2) RPBA 2020 that the primary function of the appeal proceedings was the review of the decision under appeal. In inter partes proceedings, the question that arose was where should the limits be for boards extending proceedings in dealing with new issues given that parties "could not make" amendments to their case.” (reasons 5.3.2)

The Board judged, however, that it was not necessary to refer the question to the Enlarged Board of Appeal as there was no divergent case law. Moreover, the Board considered that the question could be answered with reference to the EPC without doubt as the question was similar to the second question in the ex parte case T 1092/12:

“To what extent is a board entitled to rely upon an assertion of common general knowledge, without providing documentary evidence of such common knowledge, even though the assertion is contested?”

In summary, T1092/12 indicates that the Board is under no obligation to provide evidence for what may be considered common general knowledge. Therefore the Board considered the use of common general knowledge to be allowable here as well.

The appellant agreed that this would be the case for ex parte proceedings, but argued that this would not be applicable in inter partes proceedings.

According to the appellant, “the provisions of Article 114(1) EPC should be applied in a more restrictive manner in inter partes appeal proceedings”. The respondent chose not to reply to the Board’s communication and not to attend the oral proceedings and thereby new facts could no longer be introduced. According to the appellant, “[t]he patent proprietor should not be trapped by the late introduction of facts by the Board”. Moreover, “anonymously filed observations could be taken into account in ex parte proceedings but not in inter partes proceedings”, and “had the respondent presented this argument at this late stage of the appeal proceedings, the board would not have admitted it.”

Nevertheless, the Board decided differently and considered none of the arguments to be convincing. According to the Board “[i]t is in accordance with these provisions [i.e., RPBA 2020] that, as the appeal proceedings progress, the possibilities for parties to amend their case become increasingly limited. Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC. This applies, in particular, to a board introducing common general knowledge that its members have gathered in the course of their official experience, as in this case.”

The Board thus concluded that the common general knowledge without substantiation by evidence could be validly introduced during inter partes appeal proceedings and considered claim 1 of the main request as lacking inventive step over D1 in combination with the newly introduced common general knowledge. None of the auxiliary requests were found allowable. The appeal was therefore dismissed.