12 Oct 2016

T 0971/11 - Review of discretion or newly submitted

Key points

  • There is a tension between the two possible purposes of appeal proceedings: for a review for errors in the first instance decision, or for providing the appellant a second chance. The tension is also in the application of the power to hold inadmissible documents which were held inadmissible in first instance (Article 12(4) RPBA)
  •  The present Boards finds that a prior art document that would be admissible if filed for the first time with the Statement of Grounds, should not be held inadmissible because it had already been submitted during the first instance procedure and was, then, not admitted in a not unreasonable way.
  • As a comment, it may be relevant that the oral proceedings likely before the ODs have continued after the OD's decision (or: closure of debate about) on the admissibility of the prior art document at issue, unlike the case at issue in G 7/93.

T 0971/11 - link

Reasons for the Decision
1. Admission of documents B1 to B7 and B10 to B13 filed with the statement setting out the grounds of appeal
1.1 Under Article 114(2) EPC 1973 it is at the opposition division's discretion not to admit late-filed documents. It is well established case law that these are to be examined as to their relevance by the department of first instance; late-filed facts and evidence and supporting arguments should then be exceptionally admitted into the proceedings if, prima facie, there are reasons to suspect that such late-filed documents prejudice the maintenance of the European patent in suit.
The discretionary power conferred by Article 114(2) EPC 1973 necessarily implies that the EPO department of first instance has a certain degree of freedom in exercising its power (cf. G 7/93, OJ EPO 1994, 775). A board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. [rephrasing of G 7/93, [2.6], emphasis added.] This rule also applies with respect to opposition division decisions on the admission of late-filed submissions. It is generally not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, in order to decide whether or not it would have exercised such discretion in the same way (cf. cases cited in Case Law of the Boards of Appeal of the European Patent Office, 7th Edition, 2013, IV.C.1.3.3).
1.2 In the present case, the opponent/appellant filed the document now referred to as B1 two days before the oral proceedings before the opposition division as document E13. According to the impugned decision (cf. point 2 of the Reasons), the opposition division not only took into account that document B1 was filed shortly before the oral proceedings, but also examined its prima facie relevance. It came to the conclusion that the late-filed document failed to disclose or render obvious the subject-matter of claim 1 and could thus not prejudice the maintenance of the patent in suit. Hence, the opposition division based its discretionary decision not to admit document B1 into the proceedings on the principles established by the jurisprudence and did not act in an unreasonable way. Nor was this aspect challenged by the appellant. Under these circumstances, the board sees no reason to overrule the way in which the department of first instance exercised its discretion under Article 114(2) EPC 1973.
Together with its statement setting out the grounds of appeal, the appellant resubmitted document B1 in addition to new documents B2 to B7 and B10 to B13, the admission or not of which is governed by Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA). Following this provision, the non-admission of a document which was not admitted in the first instance proceedings into the appeal proceedings is at the discretion of the board. In fact, the wording of Article 12(4) RPBA puts documents that could have been submitted before the department of first instance but were not and documents that were submitted but were not admitted on an equal footing. 
According to the established case law, a filing made with the statement of grounds of appeal should not be considered inadmissible if it is an appropriate and immediate reaction to developments in the previous proceedings, such that the appellant who lost the opposition proceedings is thereby given the opportunity to fill the gaps in its arguments by presenting further evidence on appeal (cf. cases cited in Case Law of the Boards of Appeal of the European Patent Office, 7th Edition, 2013, IV.C.1.4.5 a)). Where an appellant challenges a finding in the impugned decision concerning the non-admission of a document by bringing forward further related submissions, the board must establish whether these submissions can be considered an appropriate and immediate reaction to developments in the first-instance proceedings and to this aspect of the appealed decision. This is not to say that, in doing so, the board of appeal is re-exercising the discretion of the department of first instance based on the case as it was presented then. Rather, the board may be now confronted with additional facts and different circumstances. The board has to exercise its discretion under Article 12(4) RPBA independently, giving due consideration to the appellant's additional submissions.
1.3 For these reasons, the present board does not fully share the view expressed, for example, in decision T 2102/08 of 26 July 2011 (point 4.3.1 of the Reasons, cf. in particular page 23), or in "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office" by B. G├╝nzel (OJ EPO, Special Edition 2/2007, [page] 40, [paragraph] no. 7), that the provisions of Article 12(4) RPBA exclude the admission of a document into the appeal proceedings if it was held inadmissible by the opposition division by a correct discretionary decision. In the judgement of the present board, a document which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not, however, be held inadmissible for the sole reason that it was already filed before the department of first instance (and not admitted). To impose such a limitation on the discretion conferred by Article 12(4) RPBA could even have the undesirable effect of encouraging a party to hold back a document during the opposition proceedings, only to present it at the appeal stage (cf. also T 876/05 of 7 November 2007, Reasons 2).
1.4 Turning to the course of the first-instance proceedings of the present case, it is noted that in a communication dated 4 December 2009 the opposition division provisionally assessed the evidence then on file and came to the conclusion that the subject-matter of claim 1 appeared not novel in view of document E7. After a further exchange of arguments between the parties, the opposition division issued a summons to attend oral proceedings (cf. communication dated 7 May 2010). In the annex to the summons, the division's indications on the disputed substantive issues were essentially limited to the following statement:
"It is the purpose of the oral proceedings to asses [sic], if the opposition is admissible an [sic] if the patent in suit meets the requirements of Article 83 EPC, Article 54 (1) (2) EPC and Article 56 EPC."
It follows that, before the oral proceedings, there was no indication from the opposition division that it would depart from its previously communicated opinion. It appears from the file that it was only in the light of the discussions during the oral proceedings that the division changed its view and finally arrived at the decision to reject the opposition, essentially based on the finding that the feature relating to the heat shrinkage of all the samples falling within a range of ± 3% relative to the average over a roll length of 500 metres was not disclosed or rendered obvious by the prior art filed before it (cf. appealed decision, point 5 of the Reasons).
Under these circumstances, it appeared not necessary for the opponent/appellant to file further evidence before the final date set by the opposition division according to Rule 116(1) EPC. Submitting the evidence B1 in combination with B2 to B7 and B10 to B13 at the beginning of the appeal proceedings and at the same time challenging, on that basis, the non-admission of document B1 because, in its view, B1 inherently disclosed the contested claim feature can be considered to be an immediate and appropriate reaction to developments in the last phase of the opposition proceedings and to the appealed decision, and more particularly to be an attempt by the opponent/appellant to fill gaps in its arguments which only became apparent during the oral proceedings before the opposition division. The fact that the opponent/appellant already filed document B1, on its own initiative, shortly before the oral proceedings so that this document could possibly be considered by the department of first instance, instead of holding it back in order to submit it only at the appeal stage, was neither detrimental to procedural economy nor a disadvantage to the respondent (or the board) and is thus not to be held against the appellant under Article 12(4) RPBA. The board additionally observes that none of the documents B1 to B7 and B10 to B13 relates to the alleged prior use "SF-E649", which was raised in the notice of opposition but not pursued further by the appellant (cf. minutes of the oral proceedings of 19 January 2011, page 2, paragraph 5). In the light of the above, the board concludes that documents B1 to B7 and B10 to B13 are not to be held inadmissible under Article 12(4) RPBA. Consequently, they are admitted into the proceedings.

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