Tuesday, 29 November 2016

T 628/14 - within time limit for making written submissions, but too late


In this opposition appeal, an opponent submitted new documents in response of the invitation to oral proceedings under Rule 116(1) EPC ("When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."). The documents were not admitted in the proceedings as they were late filed and prima facie not relevant. The Board emphasized that the invitation for written submissions should, according to established case law, not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded as established with the notice of opposition. The Board also reviewed that it is at the first-instance division's discretion to admit late filed documents or not, and concluded that the first instance division did not exercise its discretion in an unreasonable way as it had assessed the prima facie relevance of both documents.

Summary of Facts and Submissions

I. Appellants I and II (opponents 02 and 01) each lodged an appeal against the decision of the opposition division rejecting their oppositions against European patent No. 1 961 632.

II. In its decision the opposition division held that the subject-matter of granted claim 1 was new and inventive having regard to the following documents:

D6 - D8.

Documents EP 0 972 616 A2 (D9) and DE 195 45 935 A1 (D10) filed by opponent 01 in response to the summons to attend oral proceedings were not admitted by the opposition division into the proceedings as they were late filed and prima facie not relevant. However, the following documents were considered as proof of the common general knowledge and admitted into the proceedings:

D11: Dubbel "Taschenbuch für den Maschinenbau" 18. Edition, Springer Verlag, (1995) pp. H9, H10 and H17

D12: Zoebl, "Pneumatikfibel", 3. Edition, Krausskopf-Verlag, (1970) Section 7

III. As further evidence for the alleged prior use, documents PU7 to PU43 were filed by appellant II with its grounds of appeal and a witness was offered. Moreover, in response to the board's communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), the following document was filed as evidence of the ordinary knowledge of the skilled person:

D13: Dubbel "Taschenbuch für den Maschinenbau" 16. Edition, Springer Verlag, (1987) pp. H10, H12, H13, H15, H16, H18 and H20.

IV. Oral proceedings took place before the board on 30 June 2016.

The appellants I and II (opponents 02 and 01) requested that the decision under appeal be set aside and that the European patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed.

V. Claim 1 as granted reads as follows (broken into a feature analysis adopted by the parties):

[...]

VI. Appellant I essentially argued as follows:

Document D9 was considered to be highly relevant, showing two hoses for connecting the compressor and the container to the tyre, which the opposition division did not duly take into consideration. D9 also disclosed two modes of operation - inflating and repairing - as claimed and also a valve unit for controlling the compressor.

[..]

VII. Appellant II essentially submitted the following:

Documents D9 and D10 had been filed in-time, within the time limit according to Rule 116 EPC, in response to the communication of the opposition division and should have been admitted. Moreover, the opposition division was wrong in judging that the documents were not more relevant or related to a different method. They related to the same technical field, and D9 was the only prior art document describing one hose for the provision of compressed air from the compressor to a tyre and one hose for the provision of sealing liquid from the container to the tyre. Since feature 8 relating to an "additional hose" was a core feature of claim 1, D9 was prima facie relevant and should therefore have been considered. It was irrelevant whether the container was manually squeezed out (as in D9) or pressurized with compressed air from a compressor (as already known from D8). Moreover, D10 indicated the advantage of using a compressor instead of a squeezable bottle, so D9 in combination with D10 led to the claimed subject-matter.

[...]

VIII. The respondent argued as follows:

There was no particular technical content in D9 and D10 to consider the admission in view of prima facie relevance.

[...]

Reasons for the Decision

1. Non-admitting documents D9 and D10

1.1 Documents D9 and D10 had not been admitted into the proceedings because (see contested decision, point 11) there were no reasons to suspect that, prima facie, these late-filed documents prejudiced the maintenance of the opposed patent. The opposition division found that D9 and D10 were not prima facie relevant, in particular not more relevant than the closest prior art already on file, since D9 related to a different method of supplying the sealant without the use of a compressor and D10 did not show a separate procedure for inflating tyres.

1.2 Appellant II argues that D9 and D10 had been filed in time within the time limit under Rule 116 EPC and should have been admitted. However, according to the established case law, Rule 116(1) EPC (former Rule 71a EPC 1973) should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote) as established with the notice of opposition according to Rule 76(c) EPC (former Rule 55(c) 1973, see G 9/91, point 6 of the Reasons). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant II, so the board confirms the view taken by the opposition decision that D9 and D10 have been filed late.

1.3 In fact, the request of the appellants to have D9 and D10 admitted into the proceedings amounts to a request to overrule the way in which the first-instance department has exercised its discretion pursuant to Article 114(2) EPC. According to established case law, a Board of Appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

As can be taken from the contested decision (point 11), the opposition division applied the criterion of prima facie relevance, which is considered to be the right criterion in case of late-filed submissions. Moreover, the board cannot see that the opposition division exercised its discretion in an unreasonable way. The appellants argue that the opposition division did not duly consider that document D9 shows a second hose for connection to the tyre and related to the same technical field. However, there is no reason to assume that the opposition division did not reasonably consider this argument, which was already on the table in first-instance proceedings, in a prima facie approach. Having identified further differences in comparison to the prior art on file (see above), the opposition division concluded that D9 and D10 were not more relevant or might prejudice the maintenance of the patent.

1.4 Therefore, the board sees no reason for overturning the decision of the opposition division non-admitting documents D9 and D10.

2. Inventive step (Article 56 EPC)

2.1 Starting from document D8 as the closest prior art, ...

[...]

2.1.6 Therefore, the board finds that the subject-matter of claim 1 as granted involves an inventive step over closest prior art document D8 (Article 56 EPC).

2.2 Appellant II alternatively considered document D6 as the closest prior art.

2.2.1 Similar to what has been found for D8 as closest prior art, D6 also shows an embodiment comprising a four-way valve (Figures 1, 2), 

[...]

2.2.5 Therefore, the subject-matter of claim 1 as granted involves an inventive step over D6.

2.3 Finally, appellant II argues lack of inventive step starting from the allegedly prior-used kits which were designed in accordance with the design registration D7. As acknowledged by appellant II, an additional hose according to feature 8 and a three-way valve according to features 9 10 were missing in those kits. Therefore, for the reasons given already above, the subject-matter of claim 1 as granted is found to involve an inventive step. Again, it is observed that the problem formulated by appellant II ("inflating function independent from the repair function") contains a pointer to the solution which cannot be accepted.

3. In view of this finding, it can be left open whether the public availability of the prior-used kits was sufficiently proven and whether this line of attack should be admitted into the proceedings, which has been answered in the negative in the contested decision.

Order

For these reasons it is decided that:

The appeals of appellant I and II are dismissed.

This decision T 628/14 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T062814.20160630. The file wrapper can be found here. Photo "XII - 12/365" by Phil Long obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. The opponent overlooked here a very important notion: the legal and factual framework of the opposition, which is set by the opposition statement and the facts/evidence/arguments contained therein according to R 76(2,c).

    Any submission of the opponent after the end of the opposition period is prima facie late as not being part of the legal and factual framework of the opposition.

    A late filing of evidence may be legitimate, if the division brought new aspects in its annex to the summons, or if the proprietor amended its claims by limiting them with features from the description. Then the opponent may be allowed to file new evidence, but this evidence should relate to the claims as amended, but not to the claims as originally granted or a combination of those. In the latter case, the filing is always late.

    The same applies if the opponent cites evidence in his statement of opposition, but does not link it to features of the claims as granted. If the opponent wants to use those documents later, they first have to be admitted in the procedure. And this is left to the discretion of the OD, whereby the criterion of prima facie relevance is, as the BA pointed out, a perfectly correct criterion.

    For the same token, any claim filed after the time limit under R 116(1) has lapsed, is as well late, unless it consists of a combination of claims as granted. In the later case, the legal and factual framework of the opposition has not changed.

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