T 0364/22 bespreekt de vraag of een nieuw feit in het voorlopige advies van de kamer een herroeping toelaat

Background

In the decision under appeal, the decision of the OD to maintain the European Patent 3152066 was appealed by the A. EP 3152066 concerns tires with a specific rubber tread composition.  This composition was aimed to provide a good wet grip whilst having a low rolling resistance. Claim 1 of EP 3152066 concerned a product claim, claiming a tire with a specific rubber tread composition. 

The decision amongst others concerned the admittance of D32 and the implications on inventive step of this document. D32 was filed by the proprietor-respondent (R) within the Rule 116 EPC period (so two months before the oral proceedings) as a response to the preliminary opinion of the Opposition Division (OD). D32 concerned post-filed experimental data that according to the R corroborated the technical effect. In its GoA the A contested the admittance of D32 with as motivation that the outcome of the G2/21 referral (concerning the requirements for the ‘plausibility’ of a technical effect) could be that such post-filed experimental evidence should not be considered. 

Another question was if D3 qualifies as closest prior art. The A contested the decision of OD who decided that D3 does not qualify. The admittance of D32 was connected to this additional inventive step attack, as D32 may be relevant for the presence of a technical effect over D3. 

The Appeal

Before embarking on the admittance of D32 the Board of Appeal (Board) discussed their position in the admittance of several other documents. During opposition D26, D27 and D33 were not admitted. The Board followed Article 12(6) RPBA and found that the OD has exercised the correct legal principles and therefore they could not set the decision of the OD aside. However, the Board pointed to their own discretion to admit these documents as they were (also) filed together with the grounds of appeal (GoA). Still the documents were not admitted as they were not prima facie relevant.

A had argued that D32 should not be admitted in view of the at that time pending G2/21 referral. The Board firstly pointed out that D32 did form part of the procedure as it was already discussed in the decision of the OD. Moreover, whilst at the time of filing the GoA the outcome of G2/21 was not published, meanwhile the decision had become public. According to the Board D32 met the criteria of G2/21. The Board points to that the following conclusions were drawn in G2/21:

• Evidence submitted by an applicant or proprietor in support of a technical effect on which he relies for the purpose of establishing the inventive step of the claimed subject-matter cannot be disregarded solely on the ground that such evidence, on which the effect is based, was not available to the public before the filing date of the patent application in suit and was filed after that date (Summary, point I).
• An applicant or patentee may rely on a technical effect as the basis for inventive step if the person skilled in the art, in the light of his or her general knowledge and on the basis of the application as originally filed, would conclude that such effect is (i) encompassed by technical teaching and (ii) is part of the same invention originally disclosed (Summary, item II, addition of "(i)" and "(ii)" by the Board).

The ‘wet adhesion effects’ presented in D32 was, according to the Board abundantly presented in the patent (so criterium (i) and (ii) were met). Therefore, the R may rely on this effect and present post-published evidence (so D32) to support this effect.

Next, the Board overturned the OD’s decision that D3 could not serve as a closest prior art, so an inventive step analysis over D3 should be carried out. The R opened the question if this inventive step analysis should be done by the Board, or that the inventive step assessment should be remitted to first instance. 

The R requested remittal, with as motivation that in the preliminary opinion of the Board the suitability of D32 for establishing a technical effect over D3 was discussed, wherein a new fact was introduced that makes the suitability of D32 questionable. The new fact was that glycerol is an essential component of the composition of D3, and the tested materials in D32 do not comprise glycerol. 

The R had responded to the preliminary opinion in an immediate reaction by stating its intention to carry out additional experiments, however due to supply issues was unable to perform these experiments before the oral proceedings. In reason 4.2.3 the Board acknowledged this argument as being ‘special circumstances’ as defined in Article 11 RPBA (English translation) for both admitting the late request for referral to the OD and admitting the referral itself:

4.2.3 In the light of the above, the Board considers that the circumstances of the present case are exceptional and justify not only the admissibility of the request for referral to the opposition division (Article 111(1) EPC) and despite its late filing in the proceedings (during the oral proceedings before the Board; Article 13(2) RPBA). Moreover, these circumstances undoubtedly constitute special reasons for the reference itself (Article 11 RPBA), in particular for the inventive step analysis vis-à-vis D3 as the closest prior art.

The A requested an ‘immediate’ remittal (so without further discussing the other remaining issues) with as motivation that a review by the Board of these issues would favour the respondent. The Board did not concur and sufficiency, novelty and inventive step were discussed. The Board agreed with the OD that the claims were sufficiently disclosed, novel and inventive. 

The Board then remitted the case to the OD to decide on inventive step starting from D3 as closest prior art.