T 1883/12 - Discretion of OD and review

Key points

• Prior art filed after opposition period is at the discretion of the OD, the exercise of that discretion is open to only limited review in appeal. 
• Opponent had submitted a document before OD without using it in an attack, and had only based arguments on it in appeal. This amounted to a fresh case, according the Board, and the arguments are not admitted.

Quote

• "Consequently, a board reviewing a discretionary exercise can only consider whether criteria used are reasonable and have been applied reasonably."
• "The Board is open to the argument that when reviewing a first instance's decision not to admit late filed submissions it may also consider the underlying facts in so far as to establish whether the assessment of prima facie relevance is manifestly in error [...], even if discretion appears to have been exercised in an otherwise proper manner, that is after having heard the parties and reasoned its decision in an ostensibly comprehensible manner"

T 1883/12

Online 30.04.2015 - dated 17.11.2014 - Board 3.2.04 (Heath, De Vries, Frank) - C - for the decision, click here

3. Framework of the appeal

3.1 The Appellant contests the non-admission by the opposition division of D5 to D12. The Appellant generally faults the use of the criterion "not more relevant than admitted evidence", but also argues the use of other criteria such as lateness and complexity. Finally, the Boards should be allowed to reassess relevance of late filed evidence not admitted in first instance.

3.1.1 It is undisputed that D5 to D12 were submitted outside the statutory 9 month opposition period of Article 99(1) EPC, or that the division was therefore authorized to use its discretion under Article 114(2) EPC not to admit this evidence. Nor is it disputed that prima facie relevance is an important criterion in deciding whether or not to admit late filed documents.

3.1.2 Following established case law, see Case Law of the Boards of Appeal, 7th edition 2013 (or CLBA) IV.C.1.3.3, 2nd paragraph citing G7/93 (OJ 1994, 775), reasons 2.6, a discretionary decision such as the admission or not of late filed evidence is open to review only to determine whether or not discretion was exercised properly, that is according to the proper principles. That a board of appeal reviews only the manner in which first instance discretion is exercised and does not reassess relevance and so repeat the exercise of discretion itself follows from the special nature of EPO appeal proceedings as judicial review proceedings, as is recognized in jurisprudence, see e.g. CLBA, IV.E.1. Thus, they do not provide for a simple re-examination of the facts and evidence submitted in first instance; rather they serve to assess the correctness of the decision under appeal which is its subject. For this reason in particular, where the admission or not of late filed evidence in first instance is concerned, the Board normally reviews only the proper exercise of discretion, but does not itself consider whether or not to admit the late filed evidence.

3.1.3 The relevant criteria for admitting or not late filed submissions are set out e.g. in the Guidelines, E-V.2, which mentions prima facie relevance as most important (but not exclusive) criterion. The approach outlined there follows from the principles set out in G9/91 (OJ 1993, 408) and G10/91 (OJ 1993, 420) for changing the extent of opposition or introducing new grounds, which apply generally to late-filed facts, evidence and related arguments that go beyond the indication of the facts, evidence and arguments presented in the notice of opposition and which establish the legal and factual framework of the opposition, see T1002/92 (OJ 1995, 605), reasons 3.2 and 3.3. Prima facie relevance is ascertained on the face of the facts, i.e. with little investigative effort, which reflects the need for procedural expediency in considering, and admitting late filed facts and evidence.

The interest for procedural expediency is also expressed in the common approach of T1557/05, see reasons 2.4, not to admit late documents if prima facie not more relevant than what is already on file. In this regard the Board adds that relevance is decided in relation to facts to be proven, and if late documents, on the face of it, are not more relevant to that fact than admitted evidence and thus appear to add nothing, it is perfectly reasonable in the interest of procedural economy not to admit them. This approach strikes a fair balance between the principle of ex officio examination and the general interest of procedural expediency, which governs any judicial or administrative procedure (cf. G9/91, G10/91, reasons 14). Thus the Board sees no fault in the division's application of this criterion.

In relation to D5 and D5b the Board adds that the balance struck by the division is all the more reasonable as the relevance of these post-published documents hinged on a much later submission of invalid priority made in the oral proceedings before the division. A discussion of that relatively complex issue at that very late stage would clearly have impacted on procedural economy.

3.1.4 The Guidelines E-V.2 and underlying T1002/92 also clearly allow for other criteria, such as the state of the procedure and the reasons for belated submission, in admitting late filed submissions. Furthermore, a prima facie assessment of the relevance of late filed evidence is necessarily a function of the complexity of its content and that of the questions at issue. Whatever criteria are applied, however, the exact manner in which they are applied or how they should be weighed cannot be prescribed as this would seriously undermine the freedom that is necessary to the exercise of discretion by a first instance. Consequently, a board reviewing a discretionary exercise can only consider whether criteria used are reasonable and have been applied reasonably. In this regard the Appellant provides no specific argument, nor is it apparent to the Board that the division applied wrong criteria or applied criteria in a wrong way. As stated "prima facie not more relevant than admitted evidence" is an accepted criterion which strikes a fair balance between opposing requirements.

3.1.5 The Board is open to the argument that when reviewing a first instance's decision not to admit late filed submissions it may also consider the underlying facts in so far as to establish whether the assessment of prima facie relevance is manifestly in error (as asserted specifically in regard of D8), even if discretion appears to have been exercised in an otherwise proper manner, that is after having heard the parties and reasoned its decision in an ostensibly comprehensible manner (CLBA IV.C.1.3.2 and T 281/00, T 214/01 cited therein). A reasonable exercise of discretion by a competent authority should exclude blatant error and misrepresentation of fact.

The Board however has no reason to believe that there is any manifest error in the division's assessment of prima facie relevance regarding D5 to D7 and D9 to D12, nor has this been argued. For D8, the main focus of the Appellant's arguments, cursory examination of its abstract or its opening paragraphs does not reveal any manifest error in the decision's finding (page 4, 6th paragraph) that it "relates to a valve for containers in industrial use .... thus not a closely related field to drinking cups or bottles" and that "[the] membrane does not appear to begin to invert upon suction". That this finding, which refers only to its content to the extent that the document can be discounted as not relevant, is expressed in such summary terms lies in its prima facie nature.

3.1.6 In view of the above the Board therefore confirmed the division's decision that the documents D5 to D12 should not be admitted into the proceedings.

3.2 The Appellant also contends that D14 to D18, filed in first instance with letter of 1 June 2012, be admitted. As these documents were seen to be filed only against auxiliary requests, the division saw no need to introduce these documents (decision, page 5, 3rd paragraph). In the appeal proceedings the Appellant has to date made detailed submissions only with regard to D14. As no case, much less a complete one, was made in appeal for the other documents, the Board, pursuant to Article 12(4) with Article 12(2) RPBA, has disregarded these other documents D15 to D18 in the further procedure.

3.2.1 As for D14, this is a WO publication under Article 153(3) EPC with a priority date falling between that claimed by the patent and its filing date. The document was appended to the letter of 1 June 2012, but did not figure in any of the arguments in that letter (the reference to "D14" on pages 6 to 7 of that letter is to a different document, the WO publication of the patent's priority application). Though it had already been submitted in first instance, D14 is first discussed in any detail in the statement of grounds of the appeal (points F14 to F20) where it is cited under Article 54(3) EPC against granted claim 1.

3.2.2 The new novelty objection hinges on a submission also made for the first time in the statement of grounds of appeal that granted claim 1 does not benefit from the claimed priority, as it would not concern the same invention, and as a US provisional application cannot give rise to a valid priority. Invalid priority had been alleged in the 1 June 2012 letter on pages 6 and 7 but in a different context and without any supporting argument: "as a result of amendment made to claim 1 of the majority of ... the auxiliary requests the patentee is no longer entitled to [the claimed priority]".

3.2.3 These new submissions regarding priority and lack of novelty of granted claim 1's subject-matter over D14 pertain to new facts and evidence that lie outside the factual and evidentiary framework of the appeal decision, i.e. they relate to a fresh case. As D14 had already been submitted and the issue of priority mentioned in first instance, not only could this fresh case have been presented in first instance, it should have been presented then, if the Appellant had duly substantiated the contentions with argument. Nor has the Appellant provided any justification for these new submissions at this late, appeal stage. Finally, the critical priority issue is far from straightforward, as is demonstrated by the 10 pages of submissions, and precludes any prima facie assessment of the relevance of this submission and D14.

3.2.4 For these reasons the Board decided not to admit D14 to D18 pursuant to Article 114(2) EPC in conjunction with Articles 12(2) and (4) RPBA.