Thursday, 24 August 2017

T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 
In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 
The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

Reasons for the Decision
3. Admission of submissions
3.1 Letter dated 13 April 2017
Appeal proceedings are based on the notice of appeal and the statement of grounds of appeal and any written reply of the other party or parties (to be filed within four months of notification of the grounds of appeal), any communication sent by the board and any answer thereto filed pursuant to directions of the board (Article 12(1) RPBA).
Article 12(2) RPBA provides that the statement of grounds of appeal and the reply must contain a party's complete case. Under Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. A non-exhaustive list of criteria to be included in the board's exercise of discretion is given in Article 13(1) RPBA.
The appellant argued that, because respondent 2 had not made a case under Article 12 RPBA, respondent 2's letter dated 13 April 2017 had to be disregarded.
However, the board does not derive from the provisions of Articles 12 and 13 RPBA that a party that did not file any submissions within the four months of notification of the grounds of appeal would, as from the outset, be excluded from presenting submissions at a subsequent stage. No such exclusion is explicitly provided for in Articles 12 or 13 RPBA. Nor can any such exclusion be implicitly derived therefrom. Rather, Article 12 RPBA is concerned with defining the basis for the appeal proceedings and introducing a cut-off point at which a party's case is considered to be complete, such that the board is able to assess the appeal case and, subject to oral proceedings, take a decision. Hence, it is the risk of a non-appealing party that a decision is taken without that party having made its case if it does not file its submissions in due time, combined with the further risk that any submissions filed after the cut-off point are not admitted under Article 13 RPBA.
In view of the above considerations, the board does not agree with the approach suggested by the appellant that respondent 2's letter dated 13 April 2017 was to be excluded for the sole reason that no submissions under Article 12(1)(b) RPBA had been filed.
In the context of a non-appealing party that did not make any submissions within the four-month time limit under Article 12(1)(b) RPBA, the board notes that such a party cannot be in a better position than a party that did make its submissions in due time. Accordingly, the board considers that the requirements set out in Article 12(2) RPBA concerning the quality of the submissions apply, i.e. all the facts, arguments and evidence relied on have to be expressly specified. Likewise, aspects which according to the case law of the boards of appeal are considered by a board when exercising its discretion under Article 12(4) RPBA may additionally be taken into account in the context of the board's exercise of its discretion under Article 13(1) RPBA.
Therefore, the board also does not agree with respondent 2's view that, because the letter of 13 April 2017 merely comprised arguments, it should be admitted, as opposed to the submission of new documents. From Article 12(2) RPBA it is clearly derivable that the concept of a party's "case" refers to the presentation of requests, facts, arguments and evidence. Article 13(1) RPBA takes up this concept by referring explicitly to "a party's case". Accordingly, the submission of lines of argument which had not been presented up until the cut-off point laid down in Article 12(1) RPBA constitutes an amendment to a party's case within the meaning of Article 13(1) RPBA, and its admission and consideration are subject to the board's discretion.
As can be seen from the minutes of the oral proceedings before the board, respondent 2's submissions dealing with sufficiency of disclosure were the only submissions on which the board had to take a decision as to their admission into the proceedings.
Of the various lines of argument concerning sufficiency of disclosure presented in the letter, the board did not admit the line concerning the determination of the molecular weight, i.e. the parameter "molecular weight", its clarity and the absence of a method for its measurement addressed on pages 5 to 7 and under point III.1.of said letter.
This line of argument was raised for the first time in appeal proceedings in the letter dated 13 April 2017, received about a month in advance of the oral proceedings before the board. In this context it is not relevant either that the ground for opposition under Article 100(b) EPC as such was already discussed in opposition or that this line of argument had been addressed in the impugned decision, because the appeal proceedings are not a continuation of the opposition proceedings. As neither the appellant nor respondent 1 had presented said matter in their submissions according to Article 12(1) and (2) RPBA, it was not within the scope of the present appeal. Nor had this issue been addressed in the board's communication and thereby brought into the appeal proceedings of the board's own motion. Accordingly, this was indeed a new line of argument and subject to admission by the board under Article 13(1) RPBA.
In addition to the fact that this line was presented at a very late stage of the appeal proceedings, the board considers the examination of sufficiency of disclosure in relation to a parameter to be a complex matter which can give rise to further issues. It involves the analysis of the parameter as such and its measurement, the evaluation of the knowledge of the skilled person with regard to the specific polymer under consideration and possibly also the assessment of whether Article 83 EPC or Article 84 EPC is to be applied. In these circumstances, the board considers that the aspect of whether or not the line of argument is of prima facie relevance, an aspect which may also be taken into account in the context of Article 13(1) EPC, is outweighed by the aspects of complexity and the procedural stage at which the argument had been brought forward.
Accordingly, the board, exercising its discretion, decided not to admit said line of argument (Article 13(1) RPBA).
This decision T 0293/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T029312.20170515. The file wrapper can be found here. Photo by PublicDomainPictures obtained via Pixabay under a  Creative Commons CC0 license (no changes made).

1 comment :

  1. The decision is interesting in that it makes clear that a respondent to an appeal does not forgo his right to reply to an appeal as argued by the appellant, but if he replies late, he will be confronted with Art 13(1) and 13(3) RPBA. A wise decision.

    In general it is amazing to see how often parties, or better their representatives seem to ignore the RPBA, and then they wonder why they loose.

    The RPBA in their present version date back to 2005, so they are not the scoop of the day.

    Art 12(2), 12(4), 13(1) and 13(3)RPBA are a must, or should be staple diet for every representative who thinks he is qualified.

    I cannot remember seeing any question relative to the RPBA in paper D of the EQE. Why not?