T 2541/11 - Documents filed with appeal are at discretion of the board

Key point

• The allegedly novelty destroying document E12 filed with the statement of grounds is not admitted as being late filed under Article 114(2) EPC.
• The Board notes that E12 was filed three years ago, but that its particular relevance was only argued in appeal, and does not seem to approve of such strategy. 

This post has been kept in stock for some time.

T 2541/11 - 16.04.2015

Dated 17.12.2014 - Board 3.2.04 - publication C - for the decision, click here

Summary of Facts and Submissions
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I. The appellant-opponent lodged an appeal, received 12 December 2011, against the interlocutory decision of the opposition division posted on 13 October 2011 on the amended form in which European patent no. 1394387 could be maintained and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 23 February 2012.

The appellant-proprietor also lodged an appeal, received 14 December 2011 against the above interlocutory decision and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 20 February 2012. [...] 

VII. The appellant-opponent mainly argued as follows:

Admittance of E12

E12 is filed in response to developments in the proceedings. Figure 6 discloses all features of claim 1 including an impeller insert. Therefore E12 is novelty destroying for claim 1. Figure 4 of E12 is a better starting point for assessing inventive step than E9 since, as well as disclosing an impeller with a blind hole, it also discloses a retaining ring. Therefore E12 should be admitted. [...]

Reasons for the Decision

1. The appeals are admissible.

2. Background

The patent concerns turbochargers and their impellers, specification paragraph [0001]. Impellers are typically made of aluminium alloys and provided with a steel insert for threading to the shaft, the joint between the insert and the impeller being achieved with an interference fit, paragraphs [0002] and [0004]. In use the joint is subjected to cyclic centrifugal and thermal stresses. This results in the insert "walking" along the impeller, specification paragraph [0005]. The invention aims to prevent this, paragraph [0006].

3. Admittance of E12

3.1 Document E12, the admission of which is contested, was filed with the grounds of appeal and thus outside the opposition period. It is therefore late filed and subject to the discretion afforded by Article 114(2) EPC. This fact is not changed by filing new evidence with a statement of grounds of appeal that meets the requirements of Article 12(2) RPBA. Such evidence remains late filed and thus subject to the discretion of Article 114(2) as may be inferred from Article 12(4) RPBA. In exercising their discretion the Boards consider, among other factors, relevance and whether or not late filing is justified by developments in the procedure, see Case Law of the Boards of Appeal, 7th edition, 2013 (CLBA) IV.C.1.4.5 b) and the decisions cited therein.

3.2 Firstly, no justification was originally provided for E12 which was cited in the grounds of appeal as one among other citations against claim 1 as granted and as held allowable by the opposition division (now both abandoned). It was first cited, again as one amongst other citations, against the set of claims of what is now the main request more than two years after its submission but again with no justification for this late submission. Only in the oral proceedings before the Board, over three years after the interlocutory decision and two and a half years after this set of claims was submitted, was it argued that the filing of E12 should be seen as a response to the decision's reading of the term "socket" in claim 1 as blind hole and the corresponding amendment made in claim 1 of the main request. This argument also fails to convince as two other documents, E1 and E9, already on file and on which the appellant-opponent also bases his case, show the contested feature of a blind hole in an impeller with an insert. For these reasons these late submission can carry but little weight for the Board in exercising its discretion.

3.3 Nor is the special significance of this document such that it outweighs the lack of justification for its late filing. In particular its significance over and above what is already on file is not immediately apparent to the Board. E1 and E9, already on file, both show inserts in blind holes (see below) nor is this contested. In E12 however it is not unequivocally clear to the Board from cursory inspection of the parts cited that it discloses an insert, which is a central feature of the claimed invention. Figure 6 might show part of annular spacer ring 94 (see column 7) inserting into the bore hole between the bore wall and the threads of the shaft. However, the otherwise detailed figure 6 shows the spacing to be so slender as to raise serious doubts as to whether it was indeed intended as a practicable feature, or is merely a drawing artefact. Column 7, lines 25 to 26, cited by the appellant-opponent furthermore has the spacer ring interference fitted onto the sleeve, and not inside it or the bore as required by claim 1.

As the feature of an insert is critical to novelty and inventive step and it is debatable whether that feature is indeed present in E12 that document whereas it is indisputably present in E1 and E9 together with the feature of a blind hole, it is unlikely to change the outcome of the proceedings.

3.4 For the above reasons the Board at the oral proceedings exercised its discretion in accordance with Article 114(2) EPC not to admit E12 into the procedure.

4. Objection under Rule 106

4.1 In reaction to the Board's announcement not to admit document E12 into the appeal proceedings, the appellant-opponent submitted that non-admission of E12 without a full discussion as to its relevance violated their right to be heard (Article 113(1) EPC) as that right entitled them to a full reaction to the late filed amendments.

4.2 The appellant-opponent does not contest that the E12 was filed outside the opposition period, or that the issue of its admissibility was raised (cf. the annex to the summons, point 2) and discussed by the parties (see minutes). In that he demands under Article 113(1) a "full reaction ... by filing and relying on additional prior art "and a "full discussion" thereof, he rather appears to question whether admissibility of evidence filed in response to unforeseeable amendments should be discussed at all. Thus, a right to present all arguments as if the document had been admitted, instead of arguments as to why it should be admitted, amounts to a de facto admittance of the document, implying, contrary to Article 114(2) EPC, that the Board had no discretion to disregard a late filed document. Indeed, the appellant-opponent's argument in this respect appears to pit the right to be heard under Article 113(1) EPC against the discretionary power of Article 114(2) EPC.

4.3 In adversarial proceedings the right to be heard is closely related to the principle of equality of arms which means that a party should be able to present its case without being unfairly disadvantaged vis-a-vis the other party, see e.g. Singer-Stauder: Europäisches Patentübereinkommen, 6**(th) edition 2013, p 934, 44. Any right to respond arises from this principle. However, in the Board's view that right is not absolute but must be balanced inter alia by the same need for procedural economy and due diligence that underpins Article 114(2) EPC and in a similar manner as this requirement sets limits on the power of ex officio examination of Article 114(1) EPC, which are particularly strict for opposition appeal proceedings before the EPO due to their nature and purpose as judicial review proceedings, cf. G9/91 (OJ EPO 1993, 408), reasons 18. Thus, in this case also, where new evidence is said to be presented in response to unforeseen amendments, Article 114(2) EPC will afford the Board discretionary power in disregarding such evidence. In the Board's view discretion is exercised in a fair and proper manner in accordance with established jurisprudence (CLBA, I.C.1.4.5 b) cited above) by weighing factors such as justification and significance. These factors were duly considered and the parties given an opportunity to comment thereon as noted above.

4.4 For these reasons the Board at the oral proceedings held: "The Rule 106 EPC objection is dismissed as the Board sees no violation of the right to be heard in the non-admission of E12. As indicated, the document is late filed and its admission is at the discretion of the Board, i.e. it sees no absolute right of a party to have late filed evidence considered fully. This is not changed even if the evidence is filed in response to unforeseeable developments in the procedure. The question of timing and time limits is moot." [...]