New Legal Arguments vs New Facts on Appeal: The Court of Appeal on Rule 222 RoP
The Court of Appeal clarifies the boundary between admissible new legal arguments and inadmissible late-filed evidence under Rule 222.2 RoP. Blanket references to first-instance prior art are also deemed insufficient.
The Court of Appeal has confirmed that Rule 222.2 RoP restricts the late filing of facts and evidence but does not prevent a party from submitting a new legal argument on appeal, provided that the argument relies on the factual record established before the Court of First Instance.
Why did the Court of Appeal admit Hartmann's new argument on claim construction?
During the infringement appeal, Hartmann challenged the local division's claim construction regarding feature 2.2 of EP 2 755 901. Hartmann advanced the argument that the lifting of a flap could be integrated into the same work step as the pivoting movement. Omni-Pac objected, asserting that this submission was new and therefore inadmissible.
The Court of Appeal in UPC-COA-0000908/2025 rejected Omni-Pac's objection. The panel noted that Rule 222.2 RoP permits the Court to disregard requests, facts, and evidence not submitted during proceedings before the Court of First Instance. Crucially, the panel held that this wording makes it clear that the rule does not apply to legal arguments (reasons 27). Because the interpretation of a patent claim is a matter of law, a party may submit a new legal argument on appeal as long as it is based on the facts and evidence already submitted to the Court of First Instance.
How did the panel assess the late-filed evidence regarding the choice of packaging material?
In the parallel appeal concerning the counterclaim for revocation, Hartmann sought to introduce new evidence concerning different manufacturing methods for pulp and plastic to support an inventive step argument. Hartmann submitted Annexes 31 to 35, arguing that the local division's focus on the choice of material was not reasonably foreseeable.
The panel disagreed, observing that the use of fibrous material in relation to the prior art document GDM1 had been actively debated in the written pleadings before the Court of First Instance. Applying the discretionary test under Rule 222.2 RoP, the Court found that Hartmann could not justify why the new submissions could not reasonably have been made earlier. Furthermore, the panel assessed the relevance of the new evidence, which included a product data sheet and a web article about egg cartons as children's toys, as low. Consequently, Annexes 31 to 34 were not admitted into the proceedings.
When are blanket references to prior art insufficient on appeal?
Omni-Pac's appeal sought full revocation of the patent but primarily focused its patentability discussion on prior art documents GDM1 and GDM6. Omni-Pac included a general statement that if the claim interpretation were challenged, patentability would also need to be assessed in view of other prior art documents relied upon before the Court of First Instance.
The Court of Appeal found this approach procedurally deficient. The panel held that a general reference to submissions made before the Court of First Instance is only sufficient if the decision appealed against failed to address them. Because the local division had explicitly assessed novelty and inventive step across multiple other prior art combinations, Omni-Pac was required to explicitly state which specific pieces of prior art it intended to rely upon and explain why the local division's assessments of those documents were wrong.
What must practitioners change when formulating grounds of appeal after UPC-COA-0000908/2025?
When drafting an appeal, practitioners must strictly separate new legal arguments from new facts. A new interpretation of claim features is permissible if anchored in the existing factual record, because claim construction remains a matter of law. However, introducing new technical data or prior art requires satisfying the strict justification test of Rule 222.2 RoP.
Furthermore, appellants cannot rely on generic incorporation of arguments for revocation made before the Court of First Instance to preserve them for appeal. If the Court of First Instance has evaluated and rejected a specific prior art combination, the statement of grounds of appeal must expressly identify that combination and provide a substantiated critique of the Court of First Instance's reasoning.