Board of Appeal relies on its own CGK to support an inventive step objection without remittal to first instance (T 1370/15)

In recent years it has become increasingly difficult for parties to introduce new facts and evidence in appeal procedures before the EPO Boards of Appeal. The same stringent procedures do not apply to the Boards of Appeal themselves. In the recently published decision T 1370/15, the Board of Appeal introduced an inventive step objection for the first time in their preliminary opinion. In contrast to the majority of other recent Board of Appeal decisions, the Board of Appeal in T 1370/15 did not consider it necessary to remit the case back to the Opposition Division for consideration of the new inventive step objection. Furthermore, the Board (3.5.04) did not even consider it necessary to provide evidential support for the common general knowledge (CGK) on which the inventive step objection was based. The Board of Appeal's approach seems to have been influenced both by the EPO's drive to improve procedural efficiency and the Board's own feelings of competency in the technical area of the patent.  

Legal Background: RPBA 2020 and "ping-pong"

The Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) were introduced in January 2020. One professed aim of the RPBA 2020 was to improve procedural efficiency by reducing the likelihood of "ping-pong" between departments of first instance and the Boards of Appeal (Explanatory Notes). Ping-pong occurs when a particular issue of a case (e.g. novelty) is appealed from first instance to the Boards of Appeal but, following the Board of Appeal decision on this issue, the case is sent back to the first instance department for consideration of outstanding issues that were not originally considered (e.g. inventive step) (IPKat). 

Article 11 RPBA 2020, states that the Boards of Appeal should not remit a case back to the first instance department unless there are "special reasons" for doing so. Special reasons constitute "fundamental deficiencies which are apparent in the proceedings before the department of first instance" (Article 11 RPBA 2020). However, neither the RPBA 2020 nor the Explanatory Notes clarify whether the lack of consideration of an objection at first instance should be considered a "special reason" and/or a "fundamental deficiency".  


With a question mark hanging over what might constitute "fundamental deficiencies" justifying remittal, there was much speculation over whether RPBA 2020 would succeed in reducing ping-pong between the Boards of Appeal and the first instance departments (IPKat). Following the introduction of RPBA 2020, it seems that the Boards have, in fact, had no qualms about continuing to remit in cases where issues have not yet been considered at first instance.

In T 731/17, for example, the Board noted that, considering an issue for the first time on appeal instead of remitting the case back to the Examining Division would require the Board to "effectively replace the Examining Division rather than review the contested decision in a judicial manner” (r. 7.3). For the Board in this case (and for those in many other subsequent cases), the lack of consideration of an outstanding issue at first instance thus did constitute "special reasons" justifying a remittal under Article 11 RPBA 2020 (see also T1966/16, r. 2.2).  

T 1370/15"Special reasons" do not include lack of consideration at first instance 

The recently published decision in T 1370/15 goes against the tide somewhat with respect to the interpretation of "special reasons" justifying remittal in RPBA 2020The decision related to an appeal of the Opposition Division decision to revoke the patent (EP2200282) for lack of novelty and inventive step. 

On appeal, the decision of the Opposition Division (OD) to revoke the claims for lacking novelty was set aside. The patentee argued that the Board of Appeal should remit the case back to the OD for consideration of an inventive step argument introduced by the Board of Appeal (and thus not considered by the OD). The patentee noted that Article 12(2) RPBA 2020 specifies that the "primary object of the appeal proceedings to review the decision under appeal in a judicial manner", i.e. the purpose of appeal is not consideration of issues that are not the subject of the appeal. The patentee also argued that failing to remit the case would not comply with the principle that two tiers of assessment of an opposition should be available, i.e. a first instance decision and an appeal. 

However, contrary to the decisions of previous Boards of Appeal (e.g. T 1966/16 and T 731/17), the Board of Appeal in T 1370/15 was not convinced that the stated aim of the new RPBA to reduce remittals could be ignored. The Board of Appeal found that the lack of consideration of an issue at first instance was not a "special [enough] reason" under Article 11 RPBA 2020 to justify remittal of a case back to the first instance department. Another factor that seems to have swayed the Board of Appeal not to remit, was the Board's own feelings of expertise in the technical subject-matter, derived "from the experience of its members working on cases in this field" (user interfaces for broadcast applications). 

Can a Board of Appeal introduce CGK on its own motion at a late stage in inter partes proceedings?

The inventive step objection in T 1370/15 was raised for the first time by the Board of Appeal in the preliminary opinion. The Board cited its own CGK in combination with the prior art. The Board did not evidence the CGK but, again, referenced its own technical expertise in the field as justifying the inclusion of the CGK. Litigators and those who do not practice before the EPO may be surprised to hear that Boards of Appeal may introduce their own CGK into the proceedings, without the need to provide evidence. Indeed, the EPO Guidelines for Examination state that assertions of CGK, if challenged, should be supported with evidence (G-VII, 3.1). However, in T 1090/12 the Board of Appeal found that the Boards are not obliged to follow on Guidelines, and may cite their own CGK without evidence if they have experience in the subject matter of the case (Case Law of the Boards of Appeal, I-C-2.8.5).

In T 1370/15, the patentee argued that the Board was not permitted to introduce the CGK into proceedings at such a late stage in proceedings, especially in the absence of supporting evidence.  The patentee submitted that, by introducing CGK based on their own technical expertise, the Board of Appeal was effectively acting as an expert witness for the opponent. Such a situation, the patentee argued, was contrary to the principles of G 10/91, according to which parties at Opposition should be given equally fair treatment. Furthermore, the patentee argued, the case law permitting a Board of Appeal to cite their own CGK without evidence related to Inter partes and not ex partes proceedings (I-C-2.8.5).  Inter partes proceedings, the patentee submitted, required the EPO to take a less investigative role than ex partes proceedings, and the Board should thus not introduce its own facts and evidence in an appeal from the Opposition Division. 

The Board disagreed with the patentee, arguing first that there is "no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge". In effect, when a Board cites CGK, the Board found that the burden may be placed on the appellant to "convince the board that its findings are erroneous". This situation is contrary to the normal state of affairs, according to which each party bears the burden of proof for the facts it alleges (Case Law of the Boards of Appeal, III-G-5.5.1). 

On the fair treatment point, the Board of Appeal argued that, in general, the introduction of new facts and evidence was "investigative" on behalf of the Board, and would thus not normally be appropriate in inter partes proceedings. However, the Board considered the introduction of facts "notoriously well-known or known to the board from its members' official experience" (i.e. CGK) as a special case, requiring no investigative activity from the Board of Appeal. The Board of Appeal thus considered there to be no legal principle preventing them from introducing their own, unevidenced, CGK even in an ex partes appeal. 

Thus, despite overturning the Opposition Division decision that the patent lacked novelty, the Board of Appeal went on to find the patent invalid for lack of inventive step.  

Final thoughts

It is hard not to feel some degree of sympathy for the patentee in T 1370/15. Not only was the patentee faced with a new inventive step objection on appeal, but this inventive step objection was based on the Board's own unevidenced CGK. Whatever the legal arguments on allowability of the CGK, a party attempting to persuade a Board of Appeal that the Board's self-professed CGK is mistaken, is likely to face an uphill battle. Given the decision of the Board of Appeal not to remit the case back to the Opposition Division, the patentee's difficulties in T 1370/15 were compounded by the lack of recourse to further appeal. Whilst the EPO's drive to increase procedural efficiency is welcome, this Kat can not help wonder whether, in this case, procedural efficiency was afforded more importance than procedural fairness. 

Board of Appeal relies on its own CGK to support an inventive step objection without remittal to first instance (T 1370/15) Board of Appeal relies on its own CGK to support an inventive step objection without remittal to first instance  (T 1370/15) Reviewed by Rose Hughes on Monday, April 19, 2021 Rating: 5


  1. According to the Board, "As the board is in possession of this knowledge, no proof in the form of documentary evidence is needed." (5.3.9) This raises the question as to whether this knowledge was available to all members of the Board, or just the rapporteur. If the latter, it would be necessary for this knowledge to be exchanged between all the members of the Board and thus could and should have been provided to the parties to allow a proper determination of the facts.

  2. This decision is outrageous. If I were the patentee, I do not think I would file european patent applications again...

  3. For those outraged by this decision, it may be useful to read it and consider the feature they were talking about instead of cherry picking a few legal arguments from a 46 page well-argued decision. In reason 6.7.3, the Board explains what feature they considered to be part of the common general knowledge:

    "According to the board, before the priority date of the patent in suit, it belonged to the common general knowledge of the skilled person designing user interfaces for broadcast application that electronic program guide (EPG) tables (grids) allowed a user to select a program at the intersection of a column corresponding to a time slot and a row corresponding to a channel (see also point XIX(q) above). To someone working in the field of user interfaces, selecting items at the intersections of columns and rows of a table would have been a principle as basic as using a drill to drill a round hole in a wall. "

    I think it is to be expected that when a board decides that an opposition division was wrong to decide that a claim was not novel, but that the difference is too small to be inventive, the claim will be rejected on inventive step. It is in the nature of common general knowledge that people can agree on it without further evidence. Of course, a patent attorney is allowed to disagree if that helps the client, but it's for the Board to decide if that disagreement is sufficiently plausible to warrant a remittal and a subsequent second appeal.

  4. Administrative decisions (no, the BoA are not judidicial bodies but administrative ones lacking inter alia judicial independence) are not to be judged by the result but by their reasoning and this reasoning is very outrageous.

  5. The Patentee should demand its chance to put its case in person in Munich. Oh...

  6. Is this not a revealing example of a fundamental difference between civil law jurisdictions and those that run under English common law? I mean, in England, the court knows nothing of the case apart from the evidence adduced and must reach its decision based on that. Utterly different at the EPO, where the Convention requires of the Examining (or Opposition) Division that it not only "dons the mantle" but, even before that, it is deemed inherently to possess the knowledge and attributes of the person skilled in the art. Thus, it is routine for an EPO Tribunal to put it to a Party, as a rebuttable presumption, that such and such is cgk. Any notion of "fairness" evaporates, of course, if the Tribunal gives the Party no opportunity to rebut the presumption.

    How am I seeing it wrong here, gentle readers?

    1. I think it is a bit more subtle than that, when you see the fact of which the board took judicial notice (I haven't read the decision, just the post by Anon @ 1350 above). The old story that in England the court knows nothing of the case apart from the evidence adduced is not really all of it. When the technology is so notorious that almost everyone (including judges) has used it in their living room, would you not expect a judge to take notice? I too used an electronic programme guide of the type described before 2009.

      I don't know if it's even a Civil law / England disparity at all - compare the EUIPO's decision finding McDonald's failed to prove use of their "BIG MAC" trade mark, where the EUIPO thought McD's evidence insufficient to prove use, with the UKIPO approach of taking judicial notice that very famous marks have a reputation.

      I am no big fan of EPO case law, but this one does not seem so outrageous when you scratch beneath the surface.

    2. Having thought about it some more though there does seem to be a problem here with an inventive step attack which was not pleaded at all at first instance, being the eventual reason for revoking the patent. If that is what has happened it does seem to be wrong. It isn't so much the Board taking judicial notice of notorious CGK that I object to, as the patentee being faced with an objection, however apparently strong, which they do not have an appropriate line of appeal over.

  7. Quite. I have come across a number of EPO decisions over the years where the (usually British) authorised representative has been gently reminded that, unlike Anglo-Saxon jurisprudence, the instances of the EPO are not driven by precedents, but by the legal code of the EPC and its regulations. Not that this stops the EPO from relying on precedents when they suit it.

  8. Good thoughts from Freddie Noble but perhaps he might like to flesh out his worry about the patent owner being deprived of two instances to respond to an obviousness attack. I had a case many years ago, when that was the issue, and the TBA told me there was no need for a remittal because we can see from the OD's written reasoning, free from any doubts or ambiguities, exactly how it would have decided, had it been presented with any such attack.

    And in England, if I understand it right, there is anyway no absolute right to appeal every issue to a court of appeal.

    1. Fair point, there is often no absolute right of appeal and in particular a finding about whether or not such-and-such is CGK is one an appellate court should be particularly slow to interfere in.

      I have now read the whole decision and am not sure what I think about all of it except (surprise surprise) that it is more complicated than just the headnote and the IPKat article. I remain of the view that the Board were quite justified in taking judicial notice of the fact that grid-based electronic programme guides were CGK before 2009 and I wonder if the hotly-contested argument over whether the Board could assert this or not was a bit of a distraction from the real issue - does this CGK make the claimed invention obvious over D1? On this point the Board's reasoning is not especially convincing to me but that is not to say I think it is certainly wrong or the result of a horribly obvious error. Anyway I am quite sure that neither the patentee the opponent nor anyone else cares very much what I think about whether their invention was obvious.

      I have some sympathy for the patentee because their patent was revoked on the basis of an obviousness argument which seems less than soundly-reasoned, and which came from a Board from which there is no further appeal. But then sometimes you are going to disagree with judges about inventive step, there is really no way around that.

    2. Another way to see the Decision is that for the Board the integrity of the so-called Gold standard ("directly and unambiguously derivable") and the imperative of bringing the opposition proceedings to an end (rather than starting another game of ping pong) were seen as a higher priority than the integrity of any reasoning over obviousness. The finding of lack of novelty could not stand, but neither could the patent. What to do then? As Freddie observes, the way out was obvious: whether a step is an inventive one is something on which reasonable minds will inevitably differ.

  9. I cannot remember most things from last year, let alone 2009. It is applaudable that board members that have such long and accurate memories.

  10. @ Anonymous of Thursday, 22 April 2021 at 15:12:00 BST

    I beg to disagree and a more differentiated view is in my humble opinion necessary. Art 84 is to primarily be applied at the EPO. Examination should be such that any claim granted by the EPO should be clear, concise and supported by the description.

    Should this aim not have been reached, then Art 69 comes into play. The fact that Art 69 exists does not mean that clarity is to be diluted from the start and that we should from the start take the description into account.

    The problem is that too many examiners do not give a damn about clarity in all its most important aspects, i.e. clarity in its original sense and support by the description. Be it only due to the fact that any claim above 15 has a cost, money is a good incitation to be concise.

    I would go as far as to say that if a claim is not clear by itself then how on Earth is it possible to say that its subject-matter is at all novel or inventive. I said it before, do not be surprised that with a woolly claim you face objections of lack of novelty or inventive step. But please do not come with the excuse that when you look at the description your woolly claim is crystal clear and the lack of patentability is not justified. If it is so crystal clear when one looks at the description, then why not bring it in the claim.

    The BA are right when they state in general that Art 69 is not for the EPO, but mainly for post grant procedures.

    It is not acceptable for a BA to merely allege what is common general knowledge. If it is really such common knowledge, then it would have been easy for the BA to give a source.

    It creates a dangerous precedent as the BA have a very large discretion. The BA had the discretion to decide that it was not obliged to give a source for the so-called common general knowledge, but there is no instance to check that the discretion has been correctly exercised. The BA check whether the first instance has correctly exercised its discretion, but which body decides that a BA has correctly exercised its discretion: none!

    We are confronted her with the original default of the EPO system. No revision instance. The EPC 2000 has improved the situation by introducing Art 112a, but the EBA does only deal with procedural defects. The exercise of discretion might prima facie look formal, but can also touch substance. Whether a document is prima facie relevant is not a mere question of form, one has to look at the substance.

    The absence of a check on how a BA has exercised its discretion looks more and more necessary in view of the dwindling independence of the BA. But this a different topic.

  11. Those, dear Attentive, are really interesting and surprising observations and I thank you for them. I like your remarks on the different roles of Art 84 and 69 EPC.

    In England, litigation is supposed to be a "last resort". 90% or more declared (court-registered) patent disputes settle before trial, thanks to forensic English pre-trial fact-finding procedures.

    These procedures explore the facts that are disputed between the parties. Mostly, they concern what was the "common general knowledge" of the notional skilled person. If it was easy to determine what that cgk was, there would be no dispute before the courts and heading for trial. as to what was the cgk, there are often differences between the Parties that are decisive for the outcome of the case at trial.

    In a hard 50:50 case, where there is a genuine difference of opinion as to what was the cgk, it is therefore NOT "easy" for an ED or OD to "give a source". So much of the mental furniture of the skilled person is stuff that is so "obvious" that it "goes without saying" (as we say in English). And anything that "goes without saying" will be hard to find with a "word search" or other trawl through a library of books or patent publications, precisely because in the whole of the prior art universe it "went without saying".

    Looking at this case, and the way the TBA handled it, did not the Board give the patent owner more than enough opportunity to take issue with the Board's statement of what was common knowledge? If the patent owner found itself unable to argue in writing against the Board's written assessment of what was the common knowledge of the skilled person, why should the Board, at oral proceedings, have any doubts about the accuracy of its assessment? What's so unfair about the way this case was decided?

    1. Max Drei, if you or I were to file an opposition alleging certain things are common general knowledge, we would be required to provide evidence to back it up. How is the applicant/proprietor able to properly dispute whether the matter concerned is common general knowledge if unaware of the source of the alleged common general knowledge. It seems to me it is generally quite difficult to prove a negative and I am not sure how one is supposed to go about rebutting a claim of the sort made by the BoA if all one has to go on is 'Well we know it'.

      As for not everything be appealable in England, while that is true, do our appellate bodies tend to introduce new unsubstantiated evidence off their own bat?


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.