T 1738/12 - Not admitting is procedural violation

Key points

• The decision of the OD to not admit experimental reports into the proceeding which were filed after the final date for making written submissions (Rule 116), forms a substantial procedural violation.
• "[The] opposition division failed to give any consideration to the essential criterion as to the prima facie relevance of the data presented in [the reports]. ... Finally, although [the opponent] objected to the late-filing of [the reports], it is not apparent from the content of file that the opponent actually requested adjournment of oral proceedings, or an opportunity to conduct further tests." 

EPO T 1738/12 - link

Reasons for the Decision

1. The appeal is admissible.

2. Substantial procedural violation; reimbursement of the appeal fee

2.1 Pursuant to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full if the board deems the appeal to be allowable (cf. points 6 and 7 below), and a substantial procedural violation has occurred which renders the reimbursement equitable.

In the present case, the alleged substantial procedural violation relates to the decision of the opposition division not to admit two test reports into the proceedings, namely, documents (17) and (18), which were submitted after the final date for making written submissions in preparation for the oral proceedings pursuant to Rule 116 EPC.

2.2 The decision on the admission of these late-filed documents (17) and (18) lay within the discretion of the opposition division pursuant to Article 114(2) EPC. According to established case law, first-instance departments exercising their discretion in certain circumstances on procedural questions have some freedom, not subject to review by the boards of appeal: a board should object to the exercise of this discretion only if it concludes that the department has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (cf. "Case Law of the Boards of Appeal of the European Patent Office", 7th edition 2013, IV.C.1.3.3 and IV.E.3.6).

2.3 Hence, in order to decide whether a procedural violation has occurred, it must be assessed whether the opposition division exercised its discretion taking into account the correct principles and in a reasonable manner. The criteria to be applied by the opposition division are summarised in the Guidelines for Examination in the EPO (see version of June 2012, Part E-V.2 (applicable to the case at hand), or corresponding passage in the version of November 2015, Part E-V.2; cf. also Case Law of the Boards of Appeal, supra, IV.C.1.3.3):

"In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered. If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission."

2.4 From the reasoning in the decision under appeal as summarised above in point IV, it is apparent that the opposition division failed to give any consideration to the essential criterion as to the prima facie relevance of the data presented in documents (17) and (18). The minutes of the oral proceedings before the opposition division also do not reflect that any such discussion took place. However, the documents were readily identifiable as being prima facie relevant, since they related to the pesticidal activity of compounds tested by the opponent in document (7).

Moreover, relevant facts relating to the reasons for belated submissions were not taken into account.

In particular, it is noted that, in the communication accompanying the summons to attend oral proceedings, the opposition division repeatedly criticised that "although the Proprietor made the effort to provide biological tests for structurally similar compounds, he didn't test the same compounds as the Opponent or at least some of them for their activity in the same or even other pest species" (see annex to the summons, pages 9 and 13). As acknowledged in the decision under appeal (cf. above point IV), this was to be understood as a request on the part of the opposition division to provide "data relating to the same entities as those tested by the Opponent". The filing of documents (17) and (18), which related to the pesticidal activity of compounds tested by the opponent in document (7), therefore must be seen as a direct and legitimate reaction on the part of the patentees, triggered by the preliminary opinion of the opposition division.

The filing of documents (17) and (18) shortly prior to oral proceedings cannot be regarded as being in any way abusive, in view of the limited time available between the notification of the summons and the final date specified for making written submissions (two months), or the date of oral proceedings (three months), during which new compounds had to be synthesised and tested in order to accede to the opposition division's request.

Finally, although it objected to the late-filing of documents (17) and (18), it is not apparent from the content of file that the opponent actually requested adjournment of oral proceedings, or an opportunity to conduct further tests. Indeed, the board sees no reason why these should be considered necessary in order to evaluate the evidence on file: the results obtained in document (7), and documents (17) and (18), merely demonstrated that a given compound may be active in a given test system and inactive in another, and further data would not alter this fact. It is therefore not apparent why the opponent's right to be heard could not have been preserved by simply granting more time for it to familiarise itself with the documents filed by the patentees.

In summary, the board concludes that the opposition division, in exercising its discretion, did not consider the correct principles in a reasonable manner. The opposition division's failure to admit documents (17) and (18) therefore constitutes a procedural violation.

2.5 Since the core of the opposition division's reasoning with regard to inventive step was based on the question of whether pesticidal activity was plausible within the scope claimed (see, in particular, decision under appeal, point 5.5.4), the refusal to consider documents (17) and (18) of pertinence to this issue (cf. above point 2.4) violated the patentees' right to be heard, contrary to Article 113(1) EPC. Moreover, a causal link can be seen between the procedural deficiency and the final adverse decision on inventive step. The procedural defect was therefore decisive for the outcome of the case and thus substantial.

2.6 Hence, a substantial procedural violation has occurred in the present case which renders the reimbursement of the appeal fee in full equitable pursuant to Rule 103(1)(a) EPC.