Friday, 20 June 2014

T 2354/12 - A detour to decide on admissibility

A portion of the appeal decision relates to admissibility of late filed documents. Late filed document E6 is admissible because it seems prima facie relevant - this is often the route the Boards follow to decide on the admissibility of a late filed document. However, the admissibility of late file document E7 has not been discussed on basis of the content of the document, but mainly on basis of the what type of document E7 is. Document E7 is an Art. 54(3) EPC document (and has been submitted by the appellant in reply to the summons of oral proceedings). The Board decided on the admissibility of E7 by answering the subsequent question:  "If the document is admitted, does it raise a new ground of opposition?".  This appeal is filed by the opponent against a decision of the Opposition Division.

Citations from the decision:


Reasons for the Decision


Admissibility of documents E6 and E7

2. The teaching disclosed in document E6 seeks to make the configuration of a home network computer user friendly "by eliminating the need for any type of user interaction during the configuration process" and deals in particular with the automatic configuration of a computer.
Furthermore, as E6 appears, prima facie, to disclose a feature (ie. the automatic generation of a configuration request on the initial power-up) which according to the contested decision was not known from the documents then on file, its submission with the statement of grounds of appeal can be regarded as a justifiable reaction of the appellant to the findings of the opposition division.

2.1 Hence, despite the fact that E6 was filed only with the statement of grounds of appeal and thus had no part in the first instance proceedings, the Board, considering its relevance, has decided in favour of its admission into the appeal proceedings (Article 12(4) RPBA).

3. Document E7 is a European patent application which was filed before the filing data of the present application, but published after that date. As prior art within the meaning of Article 54(3) EPC, E7 can only be used to support a lack of novelty objection.

3.1 When filing the opposition, the opponent had indicated that the subject-matter of the patent in suit was not patentable under Article 100(a) EPC because of lack of novelty (Article 54 EPC) and lack of inventive step (Article 56 EPC). However, the lack of novelty objection was neither substantiated nor even referred to in the statement of grounds of opposition. This shows that the opponent had actually no reason to invoke Article 54 EPC as a ground for opposition. Lack of novelty was therefore never an issue before the opposition division and has to be regarded as a fresh ground for opposition raised only in the appeal proceedings.

3.2 As held by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ EPO 1993, 408, 420), if the patentee does not agree to the introduction of a fresh ground for opposition, such ground may not be dealt with in substance in the decision of the Board of Appeal at all. This conclusion was confirmed by the Enlarged Board of Appeal in its decision G 7/95 (OJ EPO 1996, 626) in which it was furthermore held that when a patent had been opposed under Article 100(a) EPC on the ground that the claims lacked an inventive step, the ground of lack of novelty was a fresh ground for opposition and accordingly could not be introduced into the appeal proceedings without the consent of the patent proprietor.
In the present case, the respondent did not consent to an examination of the novelty of the claimed subject-matter, since this issue had never been substantiated in the opposition proceedings and was in fact a fresh ground for opposition.

3.3 As document E7 would only be relevant for the assessment of the novelty of the claimed subject-matter and a fresh ground for opposition may not be dealt with by the Board without the consent of the proprietor, there is no reason to admit this late-filed document into the appeal proceedings.


This decision has European Case Law Identifier: ECLI:EP:BA:2014:T235412.20140429. The whole decision can be found here. The file wrapper can be found here.
Photo by Brian Rawson-Ketchum obtained from Flickr.

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