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".  

Ping-pong!

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 2020. The 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.