T 1854/16 - (II) Should have been filed after R.116 date

Key points

• The proprietor files amended claims one month before the oral proceedings before the OD. When should the opponent file additional prior art in response to it?
• Not in appeal, according to the Board.
• The Board observed that the auxiliary request at issue is based on claim 2 as granted.
• "Since the subject-matter of independent claim 1 of auxiliary request I'' is identical to that of claim 2 of the patent, this subject-matter was relevant from the beginning of the opposition proceedings. Hence, documents against this combination should have been filed already during the opposition period. At the very latest prior to oral proceedings before the Opposition Division - when the proprietor filed this request one month in advance of the oral proceedings - should the opponent have filed any additional prior art, the admission of which would then have been at the discretion of the Opposition Division."
• As a comment, the opponent was hence expected to file the prior art after the date set under Rule 116(1) EPC.
• As a comment, it is unclear to me whether the Board's view is that holding the new prior art inadmissible would be permitted under Art. 113(1) EPC or not. 
• The additional prior art is not admitted under Art. 12(4)  RPBA 2007.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t161854eu1.html

Late-filed documents O5c, O19, O20a, O20b, O20c

36. With its statement of grounds, the opponent filed additional documents O5C (Aurora User Manual), O19 (US 2002/0193685), O20a ("Evaluation and Extension of a Navigation System for Bronchoscopy Inside Human Lungs", 2007), O20b (SPIE Digital Library Volume 6509, Medical Imaging 2007: Visualization and Image-Guided Procedures), O20c (WO-A-2005/084571). Document O5C was referred to as "O5b" in the statement of grounds, but the Board relabeled it 05C, since a different document had already been filed with the label 05B (the opponent's submission of 24 March 2016 in proceedings before the Opposition Division).

37. The opponent used these additional documents to argue a lack of inventive step for the claim set found allowable by the Opposition Division, i.e. current auxiliary request I''. In particular, these documents were cited against the amended feature introduced into the independent claims of auxiliary request I'' defining the fiducial markers (cf. opponent's statement of grounds, page 5, first to fifth complete paragraphs). The opponent explained the late submission of these documents as a response to the proprietor's submission of this request with their letter of 23 March 2016 in response to the Summons to attend Oral Proceedings before the Opposition Division. Allegedly these documents had come to light at this stage in a search for additional material (opponent's statement of grounds, page 3, first paragraph).

38. According to Article 12(4) RPBA 2007 - which applies under Article 25(2) RPBA 2020 - it is in the Board's power to hold inadmissible facts, evidence, or requests which could have been presented in the first instance proceedings.

39. Since the subject-matter of independent claim 1 of auxiliary request I'' is identical to that of claim 2 of the patent, this subject-matter was relevant from the beginning of the opposition proceedings. Hence, documents against this combination should have been filed already during the opposition period. At the very latest prior to oral proceedings before the Opposition Division - when the proprietor filed this request one month in advance of the oral proceedings - should the opponent have filed any additional prior art, the admission of which would then have been at the discretion of the Opposition Division.

40. The time of submission of these additional documents is an indication that they should not be admitted, but their relevance is also not prima facie evident. Whereas all of them deal with fiducial markers in addition to tracking devices, this does not automatically make them relevant. O12 does not deal at all with moving treatment channels or moving target regions. The teaching of O12 relies on fixed positions of the treatment channels relative to the target regions, and the aim of O12 is to select the correct (fixed) treatment channel of a plurality of (fixed) treatment channels. Movement of a particular treatment channel with regard to the target region is not foreseen in O12. Hence, there is no motivation for the skilled person to use the fiducial markers of these additional prior art documents in combination with O12.

41. Hence, these additional documents O5C, O19, O20a, O20b, and O20c are not admitted into the appeal proceedings (Article 12(4) RPBA 2007).