Monday, December 14, 2020 T 483/17 - 'more up to the hilt' is not needed

The opponent in this case alleged that one of its own products is novelty destroying prior art. As this prior use lies within the sphere of the opponent, proof 'up to the hilt' was required. The board's analysis of this proof is very case-specific of course, but makes for interesting reading (if you're into that kind of thing). The proprietor makes a good effort to find inconsistencies in the  provided proof, which leads the Board to state at one point that if more evidence was provided, it 'would merely have been proven even more "up to the hilt"'. 

In the end the opponent manages to prove to the Board's satisfaction that it really did sell a product that falls under the scope of the claim. 

Thursday, October 15, 2020 T 421/14 - Sufficiency for a composition with non-responders

No response for a subpopulation

How credible should evidence for a composition be? In this case, the opponent argued that the initial analysis of therapeutic efficacy lacked statistical significance. Only a post hoc analysis revealed a  significantly better response for a treatment group compared to a placebo group. Moreover, the effect only occurred in a subpopulation of responders, not for the general population. Is one allowed to claim a composition for a general group even if the majority are non-responders, or should one disclaim the non-responders?  

Another issue, was the public availability of two documents C30 and C31.  C30 was poster and C31 a slide show, both allegedly displayed at a public conference by the proprietor. Both were also included in the IDS statement for a corresponding US patent. Who should prove the public availability in this situation, and what is the appropriate standard?

A related case T 799/16 sharing some of its reasons with the present decision has also been decided. 

Tuesday, January 14, 2020 T 1711/16 - Prima facie (ir)relevance is not always relevant

The admittance of evidence into appeal proceedings is left to the discretionary powers of the Board of Appeal (Article 12(4) RPBA). It is established case law (cf. G 7/93) that Boards of Appeal should only overturn discretionary decisions of the department of first instance if it is concluded that the department of first instance exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

In the present appeal case, prior art documents D6 and D7 were submitted by the opponent in response to concerns regarding the nature of a certain additive "Disperbyk-111", as expressed by the Opposition Division in its preliminary opinion accompanying summons for oral proceedings. Documents D6 and D7 were filed within the final date for making submissions set in this communication. The Opposition Division considered D6 and D7 late filed and prima facie not constituting evidence regarding the nature of "Disperbyk-111"; accordingly, the Division did not admit D6 and D7 into the proceedings.

The Board however found that D6 and D7 were timely submitted by the opponent in a fair attempt to dispel doubts about the meaning of "Disperbyk-111" voiced by the Opposition Division. As such, the "prima facie relevance" (or lack thereof) in providing convincing evidence of the identity of "Disperbyk-111" was in this case irrelevant, as the decisive point is rather whether these documents and the submissions made in their respect deal with that issue and were timely submitted. Consequently, the decision of the first instance department not to admit D6 and D7 into the proceedings was overturned.

The Board did not admit the second to nineteenth auxiliary requests of the proprietor - already filed during first instance proceedings - to the proceedings for lack of proper substantiation.

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.

Friday, December 28, 2018 T 1058/15 - Probably relevant...decidedly late

What happens when in opposition appeal the opponent-appellant – who in appeal had initially merely raised grounds in view of lack of inventive step – shortly before oral proceedings files a new document D8 allegedly destroying novelty of the claims?

Regarding this fresh ground of appeal (i.e., novelty), it is established case law that, exceptionally, in appeal proceedings a fresh ground may be admitted if the patentee agrees that such a ground be considered and if it is deemed by the Board to be prima facie highly relevant (G 9/91, Reason 18).

In view of late-filed document D8, in principle the Boards of Appeal have the discretion, under Article 114 (2) EPC, not to allow such late-filed evidence. This applies in particular to evidence filed after the statement of grounds of appeal or the reply (Article 13 (1) RPBA) or after the oral hearing has been served (Article 13 (3) RPBA). The criteria to be used in the exercise of this discretion vary according to the state of the proceedings in which the evidence is submitted.

In the present case, the appellant filed document D8 only after the hearing had been scheduled and only a few weeks before the hearing. At such a late stage of the appeal process, general legal principles such as procedural economy, legal certainty and equal treatment of the parties are becoming increasingly important.

The Board found that the possible relevance of an easily retrievable document such as D8 should already have become apparent from its title, figures and IPC class. The opponent-appellant had failed to substantiate any reasons which would excuse overlooking D8 and its omitted submission in the first-instance proceedings.

The novelty objection based on D8 in the present appeal proceedings could not be considered a completely new ground for opposition as in the present case novelty had already been objected to in opposition proceedings on the basis of another document (D1). Regardless, the Board found that in the spirit of G 9/91, the patentee should not have to expect that a further ground for opposition will come into play during the appeal proceedings and complicate the procedure.

Accordingly, given that the patentee did not consent to the admission of new document D8, and in view of the inaccurate and very late presentation of this document and the very late revisitation of novelty which was not the subject of the appeal proceedings until then, the Board - notwithstanding relevance of the new document - decided to exercise its discretion under Article 13 (1) RPBA in order not to allow document D8 in the proceedings. The claims were found to be inventive and the appeal was rejected.

Wednesday, December 05, 2018 T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. 

Wednesday, September 06, 2017 T 158/14 - Hidden in plain sight

If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 

The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.

The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 

The board doesn't go along with either objection. 

Thursday, October 06, 2016 T 971/11 - Too late for first instance but admissible in appeal

After you missed the first train, can you catch the next?

The opponent filed a document B1 just before the first-instance oral proceedings. The opposition division considered the document late and not prima-facie relevant. The document was not admitted into the proceedings. The document is again submitted with the statement of the grounds. 

On the one hand the appeal board should only verify that the opposition division's decision not to admit the document was not unreasonable. On the other hand, they need to make up their own mind when the document is presented with the appeal? The board discusses this dilemma, and in the end does not hold it against B1 that is was already rejected by the opposition division. B1 is admitted into the appeal procedure. Another new document that was filed just before the oral proceedings in appeal was not admitted.

Friday, May 15, 2015 T 1756/11 - Third party excluded from the party?

This is an appeal against a decision of the Opposition Division to maintain European Patent No. 1 219 158 in amended form in accordance with the proprietor's first auxiliary request.

The opponent filed its notice of appeal on 9. August 2011 while paying the appeal fee. The grounds were filed on 23. September 2011.

Observations by third parties were filed on 17. January 2013 and, in accordance with Art. 114 (2) EPC, communicated by the Board towards the parties.

The preliminary opinion of the Board was issued on 30. September 2014. Oral proceedings took place on 14. January 2015.

Neither the Appellant or respondent commented on the Observations by third parties.

The Board in this decision decides to disregard the late-filed third party observations and to refrain from mentioning them in its decision. Cited below is the board's motivation for this.

Headnote

"See Reasons 2"

Briefly paraphrased and translated as:

Reason 2.3: Art. 114(2) gives the Opposition Division the right to disregard late-filed facts or evidence. However, this applies to filings by parties to the proceedings, which according to Art. 115 a third party is not. Nevertheless, Art. 114(2) is considered to still apply to third party observations which were filed after the opposition time limit by way of a legal fiction according to T 951/91, reason 5.9.

The reasoning behind this is to prevent Art. 115 being (ab)used to expand the rights of third parties or even parties to the proceedings.

Reason 2.5: Although a third party thus has no right to have its observations considered by the Opposition Division, it is common practice for the Opposition Division to at least comment on the relevance of such late-filed third party observations in their decision.

Reason 2.6: Due to the third party not being a party to the proceedings, there is thus no need to, in case of late-filed third party observations (i.e., filed after the time limit for filing the notice of opposition), to comment on their inadmissibility in case the Opposition Division considered the observations not relevant and further disregarded them.

Reason 2.7: On the other hand, the Opposition Division may nevertheless consider and examine such late-filed observations out of its own motion under Art. 114(1) if it considers them prima facie relevant.

Reason 2.8: However, in appeal proceedings, the own-motion principle applies to a lesser degree ("verliert (...) das Gewicht"), especially in inter-partes proceedings, G 9/91, G10/91, reason 18. Here, the impartiality of the Board of Appeal is of up-most importance.

Reason 2.9: The Board of Appeal thus generally needs to disregard late-filed third party observations, except when they relate to amendments during the opposition or appeal-proceedings, G 9/91, G10/91, reason 19, in which case the Board may or may not admit them into the proceedings.

Reason 2.10: A party to the proceedings may however at all times submit comments on new facts or evidence from such third party observations, when these in their view can affect the decision. This right comes forth from Art. 113(1), i.e., the right to be heard. In this case, the Board has to decide on the (in)admissibility of such late-filed comments from the party to the proceedings.

Reason 2.11: In the present case, despite there being claim amendments during the opposition proceedings, the Board is of the opinion that the (anonymous) late-filed third party observations are to be disregarded and not mentioned in the decision. No party commented on the observations either in accordance with reason 2.10.

Wednesday, November 26, 2014 T 0021/09 - Hear, hear!

The fundamental right to be heard... 

In this decision following opposition the board considers the decision from the OD not to allow additional arguments and experimental evidence as a response to the preliminary opinion just before oral proceedings a violation of the right to be heard under Art 113(1) EPC. It appears that the board was especially unhappy with the fact that the OD failed to address the issue of late-filing and the submission of the evidence it in the minutes of the oral proceedings. The board considers it a fundamental deficiency that there is an absence of reasoning in the decision concerning the experimental evidence filed by the proprietor in support of its line of argument on inventive step, and refers a.o. to decision T 0135/96 of 20 January 1997. 

Summary of Facts and Submissions

I. European patent No. 1 185 695 with the title "Process for high throughput DNA methylation analysis" was granted on European patent application No. 00928969.5, which was filed as international application under the PCT and published as WO 00/70090 (in the following "the application as filed"). The patent was granted with 21 claims.

II. Two oppositions were filed based on the grounds that the claimed subject-matter lacks novelty and inventive step (Article 100(a) in conjunction with Articles 54 and 56 EPC), and extends beyond the content of the application as filed (Article 100(c) EPC), and that the invention as claimed is not disclosed in the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC).

III. Opponent 01 withdrew its opposition during the opposition proceedings.

IV. By a decision of an opposition division of the European Patent Office under Articles 101(2),(3)(b) EPC posted on 20 November 2008, the patent was revoked. The opposition division found that the subject-matter of the amended claims according to the main request then on file lacked an inventive step, and that the amendments introduced into the claims according to the second auxiliary request then on file offended against Article 123(2) EPC. A set of claims filed during the oral proceedings as first auxiliary request was not admitted into the proceedings.

V. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division. Together with its statement of grounds of appeal, the appellant submitted a new set of amended claims (claims 1 to 16) "as the main request". The appellant requested that the decision under appeal be set aside and the case be remitted to the opposition division on the grounds that its right to be heard had been violated in opposition proceedings. As a subsidiary request, the appellant requested that the decision under appeal be set aside and the patent be maintained on the basis of the set of claims filed with the statement of grounds of appeal.

VI. The opponent (respondent) replied to the statement of grounds of appeal and requested that the decision under appeal be upheld, the appellant's request for remittal of the case to the opposition division be denied and the outstanding issues be heard by the board. As a subsidiary request, the respondent requested oral proceedings.

VII. By a communication of the board pursuant to Rule 100(2) EPC, the parties were informed that, in spite of being of the provisional opinion that the opposition proceedings suffered from a fundamental procedural deficiency, the board was disinclined to remit the case to the opposition division because the remittal would probably lead to a substantial delay in the procedure. The parties were given the opportunity to submit observations on the issue of remittal.

VIII. The appellant replied to the board's communication maintaining its request for remittal. Further, it requested oral proceedings pursuant to Article 116(1) EPC if the board intended to reject the request for remittal, and reimbursement of the appeal fee in accordance with Rule 103(1)a) EPC.

IX. In its reply to the communication, the respondent submitted further arguments in support of its view that there had been no procedural violation in opposition proceedings. The respondent agreed with the board's provisional opinion that the case should not be remitted to the opposition division.

X. The board summoned the parties to oral proceedings. In a communication under Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA) attached to the summons, the board indicated that the issues to be discussed at the oral proceedings were whether or not there had been a fundamental procedural deficiency in opposition proceedings and, if so, whether or not remittal of the case was justified. It was advanced that, if either of these two issues were decided by the board in the negative, further oral proceedings would have to be scheduled for discussion of the outstanding procedural and substantive issues.

XI. On 7 April 2014, the respondent informed the board that it would not be represented at the oral proceedings. It maintained its request that the case not be remitted to the opposition division, and relied on comments presented in writing.

XII. The oral proceedings were cancelled.

[...]

XIV. The submissions made by the appellant in writing that relate to issues relevant to this decision, were essentially as follows:

Violation of the right to be heard - Article 113(1) EPC

In opposition proceedings, the patent proprietor's right to the be heard had been violated. The opposition division had failed to consider not only experimental data submitted in preparation of the oral proceedings, but also a key argument with respect to one of the two embodiments claimed. Moreover, the opposition division had refused to admit a set of claims submitted as first auxiliary request during the oral proceedings.

[...]

Remittal to the opposition division

The violation of the right to be heard constituted a fundamental procedural deficiency which, pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal, required remittal of the case. If the board were to take a final decision on the case, the appellant would be deprived of the right to a properly reasoned decision by the opposition division in which the arguments and experimental evidence submitted in support of an inventive step were taken into account.

XV. The submissions made by the respondents in writing concerning issues relevant to this decision, may be summarized as follows:

Violation of the right to be heard - Article 113(1) EPC

The patent proprietor's right to be heard had not been violated in opposition proceedings. The issues of added matter, novelty and inventive step had been considered at length during the course of the oral proceedings before the opposition division. The experimental data submitted by the patent proprietor had not been overlooked. The proprietor had referred to these data during the course of the oral proceedings, and, as was apparent from section 5.4.1 of the decision under appeal, in particular the first full sentence at the top of page 16, and the statements on page 17, the opposition division had taken into account the data, but considered them to be of no assistance in determining inventive step. The decision under appeal was properly reasoned in that it accurately reflected the points that had been made during the course of the oral proceedings.

[...]

The amendment introduced into the claims of the first auxiliary request did not limit the scope of the claims, raised questions of clarity under Article 84 EPC and did not clearly address the objections of lack of inventive step.

Remittal to the opposition division

For the sake of procedural efficiency, the case should not be remitted back to the opposition division. The patent proprietor had had a proper opportunity to present its case before the opposition division. Any remittal at this stage would only cause unnecessary delay in the proceedings.

XVI. The appellant requested that the decision under appeal be set aside and the case be remitted to the opposition division for further prosecution. Additionally, the appellant requested reimbursement of the appeal fee. As a subsidiary request, oral proceedings were requested.

XVII. The respondent requested that the appeal be dismissed. Subsidiarily, the respondent requested that the appellant's request for remittal of the case to the opposition division be dismissed.

Reasons for the Decision

Violation of the right to be heard - Article 113(1) EPC

1. The main issue to be decided is whether or not the right to be heard (Article 113 EPC) of the patent proprietor (the present appellant) was violated in opposition proceedings. The appellant substantiated its allegation of a procedural violation arguing that the opposition division not only failed to consider experimental data and a key argument on inventive step submitted with the reply to the summons to oral proceedings, but also refused to admit into the proceedings the set of amended claims filed during the oral proceedings as first auxiliary request (see section 6.3 of the decision under appeal).

2. As regards the experimental data, the appellant referred to the Annexes 9, 8a, 8b and 7c. These Annexes were submitted by the patent proprietor as a reaction to the preliminary opinion of the opposition division on inventive step expressed in the communication dated 15 April 2008 attached to the summons to oral proceedings. In the communication, the opposition division held that none of the technical effects on which the patent proprietor relied in respect of the method of claim 6 as granted (application B) was "... supported by any corresponding experimental data which thus, pursuant established case law (cf. Case Law 5**(th) Ed. 2006, I.D.4.2), cannot be taken into consideration for the assessment of inventive step" (see paragraph bridging pages 18 and 19 of the communication).

3. According to the appellant, Annex 9 ("Evidence showing inventiveness of Application B") showed the technical performance and the biological and clinical relevance of the claimed method by reference to independent scientific publications of third parties and publications of the patent proprietor, as well as by experimental data (see sections 1.3 and 2). Prima facie, Annex 9 has evidential value for the ability of the method to discriminate between neighbouring methylation levels, in particular between low methylation levels (see section 1.3.3 of Annex 9). Additionally, Annex 9 shows that, applying the method defined as "application B", small amounts of DNA can be detected independently from DNA concentration (see section 1.3.1) with good repeatability (see section 1.3.2).

4. The evidence in Annexes 7c, 8a and 8b relates to application D. Annex 7c presents the results of experiments aimed at the detection of methylation patterns, and Annexes 8a and 8b show the results of comparative experiments in which the claimed method is compared to methods known in the prior art, in particular the Sunrise**(©) (Annex 8a) and the SybrGreen**(TM) technologies (Annex 8b). Prima facie, the experiments show a higher specificity of the claimed method.

5. Annexes 9, 8a, 8b and 7c are not mentioned in the decision under appeal. Nor are the specific experimental data provided therein discussed in the decision in connection with the issue of inventive step. Contrary to the respondent's view, the first full sentence on the top of page 16 of the decision under appeal does not relate to the experimental evidence in the Annexes in question, but only to that in Annex I, which had been filed by the proprietor on 21 November 2007 in response to the notices of opposition. As regards the statements on page 17 of the decision ("The other two technical effects are not supported by any corresponding experimental data ..."), it is not clear to the board whether the opposition division, when arriving at this finding, disregarded the experimental evidence in the Annexes in question, in particular Annex 9, or whether it considered it, but found it not to support the alleged technical effects for reasons not specified in the decision.

6. The minutes of the oral proceedings before the opposition division dated 20 November 2008 do not reflect any discussion on the experimental evidence submitted by the patent proprietor in preparation of the oral proceedings. It is, however, stated in section 3 of the minutes that documents (42) to (75) - which were filed by the patent proprietor with the same submission as the Annexes - were considered to be late-filed, and that the discussion on whether or not they were admitted into the proceedings was postponed. Whether or not the same applied to the Annexes in question, which are not specifically mentioned in this passage, is unclear. In any case it is noted that a discussion on the admission of late-filed evidence - if it took place - has not been recorded in the minutes of the oral proceedings, and that documents (42) to (75) - like the Annexes in question - are not mentioned in the reasons given by the opposition division for its findings on inventive step.

7. Under these circumstances, two possibilities arise: either the opposition division disregarded the experimental evidence in the Annexes in question as late-filed, or it may have considered it, but failed to give proper reasons in its decision as to why this evidence does not support the technical effects on which the patent proprietor relied in its line of argument on inventive step. In the first case, not only the patent proprietor has not been heard on the issue of admission of the evidence into the opposition proceedings, but, more importantly, the decision is absolutely silent about it. In the second case, the decision under appeal suffers from a severe deficiency in the reasons given by the opposition division for the adverse findings on inventive step.

8. In either case, the decision cannot be regarded as being in conformity with Rule 111(2) EPC. Since the opposition division refused the main request for lack of inventive step, the absence of reasoning in the decision concerning the experimental evidence filed by the patent proprietor in support of its line of argument on inventive step is, in accordance with the jurisprudence of the Boards of Appeal (see, inter alia, decision T 135/96 of 20 January 1997), a fundamental deficiency.

9. The question whether or not the patent proprietor expressly requested admission of the experimental evidence during the oral proceedings is not regarded by the board as a circumstance that would mitigate the severity of the violation. Since the evidence was submitted by the patent proprietor in preparation of the oral proceedings and in clear response to the opposition division's communication, it had to be assumed that the proprietor's intention was to have the experimental evidence admitted into the proceedings and considered by the opposition division.

10. Summarising the above, the board concludes that the opposition division's failure to either consider the experimental evidence brought forward by the patent proprietor, or give reasons as to why it was not admitted into the proceedings, or did not support the purported effects, violated the patent proprietor's right to be heard. Since there is a causal link between the procedural deficiency and the final adverse decision on inventive step, the procedural defect is decisive and hence fundamental.

11. In view of these findings, there is no need to consider the appellant's further allegation of a procedural violation based on the non-admission of the first auxiliary request filed during the oral proceedings.

Remittal to the opposition division

12. According to Article 11 of the Rules of Procedure of the Boards of Appeal, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

13. In the present case, the respondent argued that remittal to the opposition division would entail a delay in reaching a final decision.

14. The board shares the view of the competent board in decision T 48/00 of 12 June 2002 (see section 11 of the Reasons) that a delay of the final decision caused by the remittal is an insufficient reason not to order remittal. The fundamental right of an appellant to a fair hearing before the opposition division must overweigh any advantage that might accrue to the respondent by having the board of appeal deal fully with the case rather than remit it (see decision T 914/98 of 22 September 2000; section 3 of the Reasons).

15. For these reasons, the board decides to remit the case to the opposition division for further prosecution.

[...]

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T002109.20141113. The whole decision can be found here. The file wrapper can be found here. Photo obtained via Flickr.

Friday, June 20, 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.