T 0167/11 - Documents filed with Notice of Opposition but not relied on

Key point

• Prior art documents which are submitted with the Notice of Opposition, but which are not used to substantiate any argument, can not be declared "inadmissible". Rather the OD can not consider them.

This post has been kept in stock for some time.

T 0167/11 - 27.02.2015

Dated 22.01.2015 - Board 3.2.07 - publication C - for the decision, click here

Reasons for the Decision

3. Remarks on the procedure before the Opposition Division

The Opposition Division concluded in its communication of 8 February 2010 annexed to the summons to oral proceedings that all the further documents "are not admissible under Article 99(1) and Rule 76(2)(c) EPC since no case to answer was based upon those documents" (see point 2.1.3 above). The same occurred in its communication of 3 November 2010 confirming the date of the oral proceedings.

It appears that the Opposition Division adheres to the concept that an opposition may have a "partial admissibility" in the sense that documents filed with the opposition, but which are not "in support of these grounds" (i.e. the grounds mentioned in the opposition) as mentioned in Rule 76(2)c) EPC, are also not complying with Article 99(1) EPC and can therefore be found "inadmissible". This appears to be an analogous application of Rule 77(1) EPC, which applies, however, to the opposition as a whole.

The Board cannot agree with this approach. What an Opposition Division can do, however, is to indicate that it sees no need at that point in time to consider the evidence for which no substantiation has been submitted. This has the same result, but is not formulated as a procedural decision taken by the Opposition Division in the early stages of the proceedings.

"Admission into opposition proceedings" only appears to apply when Rule 116(2) EPC is to be considered, i.e. facts and evidence filed after the final date for making written submissions.

As a consequence, the evidence filed with the opposition is not "outside" of the proceedings, but is "in" the proceedings. Of these, the Board only deems D1 sufficiently relevant, so as to be discussed for inventive step.