T 0085/14 - Witness in appeal

EPO T 0085/14

For the decision, click here.  Last updated: 09.11.2015
Key points

• The opponent requested the hearing of three persons as witness to give evidence about public availability of documents with the statement of grounds in appeal. The case is remitted, with the instruction (in the reasons, not in the order) to hear the offered witnesses.

Reasons for the Decision

[...]

4. In the impugned decision, the Opposition Division held that it was unproven that D1 and D2 belonged to the state of the art.

In particular, it considered that Mr Ferrante's affidavit did not provide clear and unambiguous evidence that this was the case, and decided not to summon him to give oral evidence.

5. In the statement of grounds, in compliance with Rule 117 EPC, the appellant formally requested to hear Mr Ferrante, Mr Krech and Mr Russell as witnesses about the availability to the public of documents D1 and D2 and the products to which they relate.

The Board considers at least the request to hear Mr Krech and Mr Russell as a justified reaction to the Opposition Division's finding in the impugned decision, which could not have been reasonably presented at first instance. In view of Article 12(2) and (4) RPBA, this request is therefore admissible.

As explained above, establishing whether D1 and D2 and the product to which they relate belong to the state of the art for the claimed invention can be crucial for an assessment of novelty and inventive step, which was not carried out by the Opposition Division.

Moreover, for that purpose, the appellant's written submissions in the form of affidavits alone cannot be as detailed as an oral testimony, especially as far as the features of the product are concerned.

Therefore, the Board concludes that it is necessary to hear those witnesses for compliance with Article 113(1) EPC.

In order to further clarify any possible outstanding points, and considering that a summons to give evidence will have to be issued anyway, the Board also admits the request to hear Mr Ferrante, even though it was not admitted at first instance (Article 12(4) RPBA). Under these circumstances it is not necessary for the Board to decide on the appellant's request to enter Mr Ferrante's affidavit into the proceedings in full.

Hence, Mr Krech, Mr Russell and Mr Ferrante should be summoned to give oral evidence before the Opposition Division, so that it can be established whether D1 and D2 and the product to which they relate belong to the state of the art.

6. Depending on the outcome of the oral testimony, a new assessment of novelty and inventive step of the claimed invention, not yet performed at first instance, might have to be carried out.

Under Article 111(1) EPC it is left to the Board's discretion to either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

Under the present circumstances the Boards finds it appropriate to remit the case in order for the parties to have the outstanding matters examined by two degrees of jurisdiction.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.