7 Dec 2016

T 1496/13 - Late response

Key points

  • A statement of response in appeal, filed promptly after the refusal to extend the time limit, was admitted by the Board.
  • Moreover, the OD was incorrect in holding a document inadmissible that was filed with the Notice of opposition. If the publication date of a timely filed document is not clear, it may be justified to not consider the document as prior art, but the document is admissible.

 EPO T 1496/13 - link

Reasons for the Decision
Admissibility issues
1. Document D4
A hard-copy of D4 had already been submitted with the statement of grounds for opposition. The opponent/appellant did not dispute that D4 was had been made available to the public, but pointed out that it had not been established when this had happened.
The opposition division decided not to admit D4 into the proceedings because the opponent did not establish the publication date within a time limit set.
1.1 As foreshadowed in the communication issued in preparation of the oral proceedings, the board holds that the opposition division applied an excessively strict approach in not admitting D4, as the document as such was de facto submitted in time, together with the grounds for opposition. What would possibly have been justified was not to consider D4 as prior art because its publication date had not been established in time.

1.2 For the board, the respondent's statement made before the opposition division that D4 was published prior to priority date of the patent in suit is proven to be correct in view of document D16 filed at the appeal stage: Indeed, D16 demonstrates that the "Degussa-Hüls AG" only existed between 1999 and 2001. As this name appears on the cover of D4, the board has no doubts that the publication must have taken place within this time span, i.e. before the priority date claimed by the patent in suit (17 May 2005). This was not disputed by the appellant. Moreover, this finding is also in accordance with the indication "899", printed on the cover page of D4, which under the circumstances can safely be assumed to designate August 1999.
1.3 Thus, considering that D4 was filed at the very beginning of the opposition procedure and that D16 establishes publication date of D4, the board decided to overrule the discretionary decision of the opposition division by admitting D16 and, consequently, D4 into the proceedings (Article 114(2) EPC) and to consider the latter's relevant content.

2. Respondent's reply to the statement of grounds
2.1 In the present case, the board, considering the lack of a sufficient justification, took the discretionary decision not to grant the extension of the time limit set for replying to the statement of grounds of appeal, as requested by the Respondent (Article 12(5) RPBA).
2.2 A few days after the posting date of the board's communication indicating the rejection of said request, the Respondent submitted its reply to the statement of grounds of appeal.
2.3 The admission of late submissions is, in any case, subject to the discretion of the board (Article 114(2) EPC and Article 12(4) RPBA).
2.3.1 In the exercise of this discretion the board took into account in particular that the respondent reacted promptly to the refusal of the time extension request.
Furthermore, the board took into account that the Respondent's complete reply was submitted at a quite early stage of the appeal proceedings, and that it essentially comprises arguments in defence of the patent in the version allowed by the opposition division against the objections raised by the Appellant, and in defence of claim requests that had already been pending before the opposition division as auxiliary requests 1 to 3.
2.3.2 Taking into account all of the above aspects, the board saw no reason for disregarding the argumentation contained in said reply and decided that this arguments were admissible into the proceedings (Article 114(2) EPC and Article 12 RPBA), as foreshadowed in the board's communication.

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