T 2269/19 - No review admissibility under Art. 12(4) RPBA 2007

Key points

• "Both appellant [opponent] O3 and respondent [opponent]  O1 relied on document D41 in their respective replies to appellant P's grounds of appeal filed on 4 November 2019. Appellant [proprietor] P contested the admittance of D41 into the appeal proceedings. Following the transitional provisions set out in Article 25(2) RPBA 2020, Article 12(4) RPBA 2007 is applicable. Article 12(4) RPBA 2007 gives the Board discretion not to admit, on appeal, facts and evidence which could have been presented or were not admitted in the opposition proceedings" (and any such submissions not complying with Art. 12(2) RPBA 2007, it may be added). 
• " D41 had already been filed during the first instance proceedings. The opposition division did not take any decision not to admit this document. Hence, D41 is neither a document which could have been presented in the first instance proceedings (i.e. but was not), nor a document which was not admitted in the first instance proceedings. Thus the discretionary power not to admit evidence under Article 12(4) RPBA 2007 does not apply to D41. Accordingly, D41 was taken into account in the appeal proceedings."
• As a comment, this is of course a clear difference with Art. 12(4) RPBA 2020 where the Board would still have discretionary power if the request was filed during the first instance proceedings, but not admissibly filed, i.e. if D41 would have been filed late in the first instance proceedings. 
• As a further comment, this reasoning of the Board seems correct, though there seem to be not many decisions on this particular point. See e.g. T 0882/19 r. 3.4
• Note that the auxiliary request can still be held inadmissible if not substantiated in the initial appeal submissions of the patentee.

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/t192269eu1.html

Reasons for the Decision

1. Admittance of D41-D44, D46 and D47

1.1 Both appellant O3 and respondent O1 relied on document D41 in their respective replies to appellant P's grounds of appeal filed on 4 November 2019. Appellant P contested the admittance of D41 into the appeal proceedings.

Following the transitional provisions set out in Article 25(2) RPBA 2020, Article 12(4) RPBA 2007 is applicable. Article 12(4) RPBA 2007 gives the Board discretion not to admit, on appeal, facts and evidence which could have been presented or were not admitted in the opposition proceedings.

D41 had already been filed during the first instance proceedings. The opposition division did not take any decision not to admit this document. Hence, D41 is neither a document which could have been presented in the first instance proceedings (i.e. but was not), nor a document which was not admitted in the first instance proceedings. Thus the discretionary power not to admit evidence under Article 12(4) RPBA 2007 does not apply to D41.