T 1852/11 - No review of decision to admit document

Key points

• The decision of the OD to admit a late filed document, can not be reviewed by the Board.
• "The board observes that the framework of the European Patent Convention does not provide a legal basis for excluding, at the appeal stage, a prior art document which was correctly admitted into the first-instance proceedings. " 

T 1852/11 - link

Reasons for the Decision

1. Admissibility of document E10

1.1 The respondent requests the board to disregard document E10, which was admitted by the opposition division although it had been filed only one month before the date of the oral proceedings. It should be considered as late filed by the board of appeal and not taken into consideration during the appeal proceedings.

1.2 The opposition division decided to admit document E10 into the proceedings in view of its prima facie relevance (cf. impugned decision, Reasons 1.2) and after having heard the parties on this issue during the oral proceedings (cf. minutes, point 6). In view of that, it is not apparent that the opposition division exercised its discretion under Article 114(2) EPC 1973 according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775). Consequently, the admission of document E10 into the opposition proceedings is not to be objected to. This is all the more true in view of the principle of ex-officio examination under Article 114(1) EPC 1973. According to this provision, the opposition division examines the facts of its own motion, as an administrative instance and in accordance with the extent of the opposition under Rule 55(c) EPC 1973 (cf. G 9/91, OJ EPO 1993, 408, Reasons 10). In doing so, it is not restricted to the facts, evidence and arguments provided by the parties.

1.3 The board observes that the framework of the European Patent Convention does not provide a legal basis for excluding, at the appeal stage, a prior art document which was correctly admitted into the first-instance proceedings. It has to be emphasised that it is the primary function of an appeal to give the losing party the possibility of having the correctness of the first-instance decision judicially reviewed. In the case at hand, the impugned decision deals, inter alia, with the issues of novelty and inventive step in view of prior art document E10. The correctness of these findings cannot be reviewed without taking into consideration the teaching of this document.

For these reasons, document E10 cannot be excluded from the present appeal proceedings.