Fresh Ground and Amendment to a Party’s Appeal Case -- T 0967/23

1. Introduction

Although T 0967/23 concerned the patentability of an elevator power supply system, the decision is likely to attract greater interest for its procedural reasoning than for its technical analysis.

The Board addressed the relationship between two concepts that are sometimes discussed together but are governed by different legal frameworks: a fresh ground of opposition and an amendment to a party’s appeal case. In doing so, it emphasised that the absence of a fresh ground does not, by itself, determine whether a new objection is admissible on appeal.

2. A New Inventive-Step Attack on Appeal

During the opposition proceedings, the opponent argued that claim 1 lacked novelty over D1. Only on appeal did it submit that, even if novelty were acknowledged, the claimed subject-matter nevertheless lacked an inventive step starting from D1 in combination with common general knowledge.

The opponent relied on T 131/01, arguing that an inventive-step objection based on the same prior-art document does not constitute a fresh ground of opposition and may therefore be examined on appeal.

The Board did not disagree with that proposition as such. It observed, however, that the circumstances of T 131/01 were different. In that case, the inventive-step arguments had already been presented during the opposition proceedings, whereas in the present case the inventive-step attack starting from D1 was raised for the first time on appeal.

3. Fresh Ground and Amendment to a Party’s Appeal Case

The Board distinguished between two separate procedural questions.

The first is whether an objection constitutes a fresh ground of opposition, an issue governed by the Enlarged Board’s case law, in particular G 10/91, G 1/95 and G 7/95. The second is whether a party has amended its appeal case, an issue governed by Article 114(2) EPC and Articles 12 and 13 RPBA.

The Board emphasised that these are independent procedural questions. Accordingly, even where an objection does not constitute a fresh ground of opposition, it may nevertheless amount to an amendment to a party’s appeal case and therefore be subject to the Board’s discretion as to admissibility.

Applying that approach, the Board noted that both the patent proprietor and the opposition division had already taken the position before the opposition oral proceedings that D1 did not anticipate claim 1. Any inventive-step objection based on D1 could therefore have been raised during the opposition proceedings, at the latest during the oral proceedings. As no circumstances justified raising the objection only on appeal, the Board declined to admit it under Article 12(4) and 12(6) RPBA.

4. Concluding Remarks

The significance of T 0967/23 lies less in its assessment of inventive step than in its treatment of admissibility on appeal.

The decision illustrates that the question whether an objection constitutes a fresh ground of opposition is distinct from the question whether it amounts to an amendment to a party’s appeal case. Even where an objection is not a fresh ground within the meaning of G 10/91, G 1/95 and G 7/95, it may still be excluded from the appeal proceedings if it could and should have been raised before the department of first instance.

For opponents, the decision also serves as a reminder that an inventive-step objection which could and should have been raised during the opposition proceedings should not be left until the appeal stage. Otherwise, even if it does not constitute a fresh ground of opposition, it may still be treated as an amendment to the appeal case and be refused admission under the RPBA.