- In this opposition appeal, the OD had admitted D13 into the proceedings despite the proprietor requesting to hold D13 inadmissible.
- The patentee argues in appeal that the reasoning of the OD concerning D13 was incorrect and the decision to admit D13 should be reverted.
- The Board: “the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them [...]. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings” (internal citations omitted).
- The Board cites T 1549/07, r.2.1; T 1852/11, r.1.3; T 1201/14, r.2 and T 487/16, r.3; and T 2603/18, r.1 for this argument. Yet, the Board's reasoning does not persuade me.
- In my view, the legal basis for reviewing the OD's decision to admit D13 is Article 110, first sentence: “If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.”.
- The (discretionary) decision of the OD to admit D13 is part of the impugned decision and hence part of the appeal under Article 12(2) RPBA 2020. G 7/93, r.2.6 explained that “a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.” The Enlarged Board sets a highly deferential standard of review here, but in my view Enlarged Board at the same time prescribes that the BoA should (in fact, must) overrule the first instance department if that department made such an error.
- Since the decision of the OD on admissibility is part of the appealed decision, “the very aim of the appeal proceedings to review the decision under appeal in a judicial manner” in my view includes a review of that procedural decision.
EPO T 0617/16 - link
1.1 Claim 1 - Novelty and inventive step in view of D13
1.1.1 Admissibility of document D13
Appellant I [patentee] argued that the reasoning for rejecting the request not to admit document D13 into the opposition proceedings was incorrect and should be reverted, since features F2 and F3 could not be considered to be disclosed in D13.
In that regard, the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them (see e.g. T 1549/07, Reasons 2.1; T 1852/11, Reasons 1.3; T 1201/14, Reasons 2).
In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings (see T 487/16, Reasons 3; T 2603/18, Reasons 1).
Accordingly, the board sees no reason to revert the opposition division's decision to admit D13 into the opposition proceedings. Appellant I did not further comment on that issue during the oral proceedings before the board.
Reader X wrote:
ReplyDelete"The decision at stake corresponds to established case law of the BA. See e.g. "White Book", 2019 edition, Chapter V.3.5.4 Means admitted at first instance.
If the BA would revise the decision to admit D13, it would remove the whole basis of the decision of the OD.
Although late filed, D13 was considered relevant by the OD, and it was admitted in the procedure by the latter. G 7/93 is also quite clear in this respect. A procedural decision is only overruled if the discretion of the OD was not correctly applied. See e.g. "White Book", 2019 edition, Chapter V.3.5.1.
In the present case, one can consider that the BA implicitly confirmed the correct exercise of its discretion by the OD, and hence the BA did not dismiss the document in appeal.
The BA could however always diverge in its opinion about the relevance of D13 and considered that the objections raised on the basis of D13 were without merit.
This is also a way to revise the decision of the OD without making a procedural mess. The document is still in the procedure but its relevance is seen differently by a BA. The BA can always revise a decision as to the substance, and it is right so.
A decision of an OD considering that a document is novelty destroying or leads to a lack of inventive can always be revised by a BA. I fail thus to see a problem even in the present case."
I like the comment from Reader X. The OD exercised its discretion to admit D13. The TBA ought not to interfere with that exercise of discretion unless the OD's decision to admit D13 was beyond reason. That's an extremely heavy (and unpalatable) burden of proof, for the party that is asking the Board to de-admit the document.
ReplyDeleteFurther, let's think about the consequences of a TBA decision to de-admit D13. For the Rapporteur, composing such a decision in writing would involve far more effort than a decision written on the basis that D13 is admitted, but simply not relevant to validity. What for me also speaks in favour of that latter form of decision is that it puts an end to any ongoing debate between the parties, not to mention all the other industry competitors, whether the admission of D13 would have made any difference to the end result of an expensive and wasteful business and legal dispute.