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.

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.

Friday, August 12, 2016 T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.