Tuesday, November 26, 2019 T 341/15 - Late documents and late requests in first and second instance

In the present case, the Opposition Division admitted into the proceedings late-filed documents D9 and D14 and held that claim 1 of the then main request (patent as granted) and of the then first to sixth auxiliary requests did not involve inventive step pursuant to Article 56 EPC starting from D9 as closest prior art in combination with the teaching of D14. The appellant (proprietor) holds the view that they should not have been admitted into the proceedings similarly to other documents which had not been admitted by the Opposition Division. At the oral proceedings before the Board the appellant further added that D9 only concerns the preamble of claim 1 of the main request so that it would not be relevant to the invention. The Board discussed that, according to the established case law a Board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion. When considering their admission into the proceedings, the Opposition Division applied the correct criterion of prima facie relevance. In this respect the Board follows the respondent's (opponent's) view that there is no legal basis or available case law according to which some circumstances would justify that only novelty, i.e. not inventive step, should be considered for the criterion of prima facie relevance.

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal within the prescribed period and in the prescribed form against the decision of the Opposition Division to revoke European patent No. 2 155 568.

The opposition had been filed against the patent in its entirety and was based on Article 100(a) EPC (lack of inventive step only).

II. The Opposition Division admitted into the proceedings late-filed documents D9(=WO 98/22367 A) and D14(=DE 646 326 A) and held that claim 1 of the then main request (patent as granted) and of the then first to sixth auxiliary requests did not involve inventive step pursuant to Article 56 EPC starting from D9 as closest prior art in combination with the teaching of D14.

III. The Board provided the parties with its preliminary non-binding opinion on the sets of claims according to the main request (patent as granted), the first to seventh auxiliary requests filed with the statement setting out the grounds of appeal dated 22 May 2015 and the eighth to tenth auxiliary requests with letter dated 4 July 2017. For the details of the Board's preliminary opinion that the appeal was likely to be dismissed, reference is made to the communication pursuant to Article 15(1) RPBA dated 27 May 2019.

In reaction the appellant withdrew with letter dated 8 August 2019 the eighth to tenth auxiliary requests and filed further arguments regarding the admissibility of the second to fifth and seventh auxiliary requests.

IV. Oral proceedings took place on 8 October 2019. For further details about the course of the oral proceedings reference is made to the minutes. The order of the present decision was announced at the end of the oral proceedings.

V. The appellant requested that the decision under appeal be set aside and that the patent be maintained as granted (main request) or, in the alternative, that the patent be maintained in amended form according to one of the sets of claims filed as first to seventh auxiliary requests with the statement setting out the grounds of appeal dated 22 May 2015, and that documents D9 to D16 be not taken into account in the proceedings.

The respondent requested that the appeal be dismissed and that documents D9 to D16 be taken into account and that the second to fifth and seventh auxiliary requests be not admitted into the proceedings.

VI. Claim 1 of the main request (patent as granted) reads as follows:

"A package of tobacco articles, comprising: [....]

VII. The appellant argued essentially as follows (the arguments are discussed in more details in the reasons for the decision):

Admittance of late-filed documents D9 and D14

Because documents D9 and D14 were late-filed and prima facie not relevant for novelty the decision of the Opposition Division in this respect should be overruled.

Admittance of auxiliary requests in appeal proceedings

Since the patent was revoked by the Opposition Division the patent proprietor is entitled to file new requests in appeal proceedings and have them admitted into the proceedings.

Main request (patent as granted)

Inventive step of the claimed subject-matter is to be acknowledged. Document D9, taken as closest prior art, does not disclose the features of the characterising portion. The skilled person would not consider D14 since it concerns a shoulder box, i.e. a package type different from that of claim 1 and D9. Even when combining the teaching of D14 with the package of D9 the skilled person would not arrive at the claimed subject-matter.

First auxiliary request

Inventive step should be recognised for the subject-matter of claim 1 of the first auxiliary request. D14 does not disclose the features introduced in claim 1 of the first auxiliary request with respect to claim 1 of the main request.

The skilled person starting from D9 and thinking of connecting the cover flap permanently and non-removably to the lid, so that opening and closing the lid simultaneously also opens and closes the cover flap, would have no reason not to apply the re-stick adhesive ("tacky material") on the complete underside surface of the cover flap.

Sixth auxiliary request
[...]

Reasons for the Decision

1. Documents

Although the parties' requests referred to documents D9 to D16 of the opposition proceedings (see point V above), only documents D9 and D14 are relevant for the present decision.

1.1 Documents D9 and D14 were filed after the nine-months opposition period according to Article 99(1) EPC (impugned decision, points I.4, I.7 and I.9). Their admission into the proceedings was hence subject to the discretion of the Opposition Division, which decided to admit them into the proceedings (see impugned decision, point II.2; minutes of the oral proceedings, point 2).

1.2 The appellant considers that the late-filed documents D9 and D14 could have been retrieved and filed within the time limit pursuant to Article 99(1) EPC, that their late-filing was done without any justification, and that they were prima facie not relevant, in particular not more relevant than the other documents filed within the nine-months opposition period. For these reasons, the appellant holds the view that they should not have been admitted into the proceedings similarly to other documents which had not been admitted by the Opposition Division (see impugned decisions, point II.2.3).

At the oral proceedings before the Board the appellant further added that D9 only concerns the preamble of claim 1 of the main request so that it would not be relevant to the invention. In addition, since it was filed at a very late stage of the opposition proceedings, although known to the respondent, it should have been admitted only if it would have been prima facie relevant for novelty, which was not the case. For these reasons, it should be concluded that the Opposition Division exercised its discretion wrongly and in an unfair manner against the appellant.

For the appellant, the same applies for D14 which had been filed even later during the opposition proceedings, i.e. after the summons had been sent by the Opposition Division.

1.3 The Board cannot share the appellant's view for the following reasons.

According to the established case law a Board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion. It is not the function of a Board to review all the facts and circumstances of the case as if it were in the place of the department of first instance in order to decide whether or not it would have exercised such discretion in the same way (Case Law of the Boards of Appeal, 9th edition 2019, IV.C.4.5.2 and V.A.3.5.1.b).

As put forward by the respondent at the oral proceedings before the Board, documents D9 and D14 were filed either before the summons for oral proceedings had been sent (D9) or at least within the time limit set pursuant to Rule 116 EPC (D14). Even though the documents were late-filed, the procedural rules were fulfilled and a hint of tactical behaviour from the respondent's side in this respect is not apparent, even in the allegedly absence of any justification for the late-filing.

When considering their admission into the proceedings, the Opposition Division applied the correct criterion of prima facie relevance. In this respect the Board follows the respondent's view that there is no legal basis or available case law according to which some circumstances would justify that only novelty, i.e. not inventive step, should be considered for the criterion of prima facie relevance (Case Law of the Boards of Appeal, 9th Edition 2019, IV.C.4.5.3).

Hence, the Board considers that, in the present case, the Opposition Division did not base its decision on the wrong principles, or without taking into account the right principles, or in an unreasonable way.

Consequently, the Board decides to not overrule the Opposition Division's decision as far as the admittance into the proceedings of documents D9 and D14 is concerned.

2. Admittance of auxiliary requests in appeal proceedings

2.1 The purpose of the inter partes appeal procedure is mainly to give the adversely affected party a possibility to challenge the decision of the Opposition Division on its merits and to obtain a judicial ruling on whether the decision of the opposition division is correct (G 9/91 and G 10/91, OJ EPO 1993, 408, 420). The appeal proceedings are not about bringing an entirely fresh case; rather, the decision of the Board will in principle be taken on the basis of the subject of the dispute in the first-instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (see e.g. T 1705/07, point 8.4 of the reasons; T 1067/08, point 7 of the reasons, both not published in OJ EPO).

This means that parties to proceedings leading to the decision under appeal are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the Board either to give a first ruling on the critical issues or to remit the case to the department which issued the decision under appeal. Conceding such freedom to a party would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the administrative departments and the Boards of Appeal acting as the EPO's judicial instance, and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which could have been presented in the proceedings leading to the decision under appeal.

2.2 Since, in the present case, the second to fifth and seventh auxiliary requests were not presented during the opposition proceedings so that their respective claim 1 does not form part of the impugned decision, and because the appellant did not provide any convincing justification for their filing for the first time with the statement setting out the grounds of appeal, the Board does not admit these requests into the proceedings pursuant to Article 12(4) RPBA and Article 114(2) EPC.

2.3 At the oral proceedings before the Board, the appellant referring to its letter dated 8 August 2019 argued that, since the patent was revoked, it was entitled to file new requests in appeal proceedings and that such new requests should be admitted.

The appellant referred to the fact that, during the opposition proceedings, it had received only a positive opinion from the Opposition Division before the oral proceedings, that it applied a fair approach in filing new requests in due time, when necessary, and that this approach fulfilled the criterion of procedural economy in insuring an efficient procedure.

Finally the appellant argued that at least the second auxiliary request should be admitted into the proceedings since its claim 1 concerns the combination of claims of the patent as granted and, hence, cannot be seen as a surprise by the respondent.

2.4 The Board cannot follow the appellant's view for the following reasons discussed at the oral proceedings.

As admitted by the appellant, no new issues such as new objections new reasoning, or new arguments, had come up during the oral proceedings before the Opposition Division which could have been a surprise. The objections raised on the basis of the disclosures of D9 and D14 were already known from the written procedure. Furthermore, the impugned decision does not include either any new facts and/or issues which could have justified the filing of new requests in the appeal proceedings. The mere fact that the final decision of the Opposition Division differs from its preliminary opinion provided in writing cannot justify the filing of new requests in appeal proceedings. As a matter of fact, preliminary opinions are by nature not final decisions since otherwise oral proceedings would be useless.

The revocation of the patent does not give to the patent proprietor the right of having any new requests automatically admitted in appeal proceedings. The case law of the Boards of Appeal does not provide such a right (Case Law of the Boards of Appeal, 9th Edition 2019, V.A.4.11.3.g)). As a matter of fact, none of the decisions cited by the appellant during the written phase of the appeal proceedings and referred to during the oral proceedings before the Board supports this view. There always exists conditions for admission of new requests filed for the first time in appeal proceedings, in particular that they have to be justified by the normal development of the proceedings or have under the circumstances to be considered as a normal reaction of a losing party. As mentioned under point 2.1 above, providing such a right to the patent proprietor, even in case of revocation of the patent by the Opposition Division, would jeopardise the proper functioning and distribution of roles between the first instance and the Boards.

For instance T 618/14, not published in OJ EPO, point 4.2 of the reasons, which is the most recent decision of the above mentioned passage of the Case Law of the Boards of Appeal, supra, i.e. unambiguously applying the current Rules of Procedure of the Boards of Appeal, states for the admission of the new requests in appeal proceedings that it does not appear from the minutes of the oral proceedings that the patent proprietor deliberately chose not to file new requests. This, however, does not apply to the present case since as pointed out by the respondent it appears from the minutes, point 9, last paragraph, that the appellant deliberately chose not to file further requests.

Finally, the Board cannot see any distinction between the second auxiliary request and the third to fifth and seventh auxiliary requests for their admission into the proceedings in view of the above reasons.

3. Main request (patent as granted)

3.1 Since the Board considers that the subject-matter of claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision any other objections which would have been raised by the respondent against this request.

3.2 Inventive step

[...]

4. First auxiliary request

4.1 Since the Board considers that the subject-matter of claim 1 of the first auxiliary request lacks inventive step (see below), there is no need to discuss in this decision any other objections which would have been raised by the respondent against this request.

4.2 Inventive step

[...]

5. Sixth auxiliary request

5.1 Since the Board considers that the subject-matter of claim 1 of the sixth auxiliary request lacks inventive step (see below), there is no need to discuss in this decision any other objections which would have been raised by the respondent against this request.

5.2 Inventive step

[..]

6. The Board therefore finds that the subject-matters of claim 1 of the patent as granted and of the first and sixth auxiliary requests do not involve an inventive step in view of the relevant state of the art and that auxiliary requests 2 to 5 and 7 are not admitted into the appeal proceedings. Hence, the appeal cannot be allowed.

Order

For these reasons it is decided that:


The appeal is dismissed.

This decision T 341/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2019:T034115.20191008. The file wrapper can be found here. Photo "no entry" by Azlan DuPree obtained via Flickr under CC BY 2.0 license (no changes made).