T 1817/15 - New evidence on appeal

Key points

• " Prior-art documents E6, E7 and E8, together with their substantiation, were submitted for the first time [by the opponent] with the statement setting out the grounds of appeal as evidence that the subject-matter of claim 1 as maintained did not involve an inventive step. Consequently, they were not filed in due time within the meaning of Article 114(2) EPC in conjunction with Rule 76(2)(c) EPC and thus their admissibility is subject to the board's discretion." 
• " As regards the substantive relevance of prior-art documents, the board considers that where evidence is belatedly filed on appeal as an objectively appropriate reaction to the impugned decision [], such evidence should be sufficiently relevant to the outcome of the assessment of the patentability of the subject-matter claimed. However, a final decision on the relevance of these documents should not be given in the event that the case is then remitted to the first-instance department for further prosecution upon admission. Otherwise, the latitude of examination by the first-instance department would be unduly restricted[]. In other words, it would suffice in such cases to demonstrate that it is prima facie not unlikely that the admission of such fresh evidence could change the outcome of the assessment of the first-instance department." 

T 1817/15 - link

Summary of Facts and Submissions

I. The appeal of the opponent was lodged against the interlocutory decision of the opposition division to maintain the present European patent as amended according to the claims of a "main request", submitted on 29 May 2015 in preparation for the oral proceedings held on 30 June 2015 before the opposition division. []

II. With the statement setting out the grounds of appeal, the appellant submitted the following prior-art documents as evidence that claim 1 of the main request as maintained did not involve an inventive step:

E6: WO-A-99/45510;

E7: US-A-5 479 400;

E8: US-A-5 987 011. [] 

Reasons for the Decision

2. Admission of documents E6 to E8 into the appeal proceedings

Prior-art documents E6, E7 and E8, together with their substantiation, were submitted for the first time with the statement setting out the grounds of appeal as evidence that the subject-matter of claim 1 as maintained did not involve an inventive step. Consequently, they were not filed in due time within the meaning of Article 114(2) EPC in conjunction with Rule 76(2)(c) EPC and thus their admissibility is subject to the board's discretion.

The respondent objected to their admission on the grounds that they could in fact have been filed earlier, e.g. shortly before or during the oral proceedings before the opposition division, and that they were not prima facie relevant as none of them disclosed feature (h''''). It did not however provide a detailed analysis of the technical content of those documents.

As regards the admissibility of those documents, the board therefore discusses both the procedural factors (i.e. the reasons for the late filing) and the substantive aspects (i.e. their technical relevance) in the following.

2.1 Procedural aspects

2.1.1 It is established jurisprudence that an appellant's submission, with its statement setting out the grounds of appeal, of fresh evidence aimed at overturning the impugned decision is to be regarded as a normal action of a losing party (see e.g. T 406/09, Reasons 2.1.3). That certainly does not mean however that such evidence is automatically to be admitted into the proceedings. Rather, in appeal proceedings, the admissibility of evidence filed with the statement setting out the grounds of appeal is governed by Article 12(4) RPBA, which confers on a board the discretionary power "to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings".

2.1.2 Hence, the board had first to determine whether the appellant could realistically have been expected to retrieve and submit prior-art documents E6 to E8 in the opposition proceedings. In this regard, the board establishes the following facts from the present file:

- feature (h'''') was crucial to the opposition division's acknowledgement of inventive step as regards the subject-matter claimed (see point 1.4.1 above);

- feature (h''''), taken from the description of the opposed patent, was introduced into claim 1 for the very first time one month prior to the oral proceedings before the opposition division (see point I above), after a total of three different amended claim sets had been filed up to grant and one amended set of claims up to the summons to the first-instance oral proceedings, all of them lacking that feature (see the respondent's letters of 27 May 2003, 15 February 2010, 29 February 2012 and 27 March 2014);

- the communication accompanying the summons to the oral proceedings before the opposition division indicated that claim 1 then on file lacked novelty (Article 54 EPC) inter alia over document TPO-1, that the opposition division would not express any preliminary opinion on the inventiveness of claim 1, and that the main issues to be discussed in the oral proceedings were the allowability of the "current sets of claims" (see items 15, 19.5 and 20 of that communication).

2.1.3 The board concludes from the above that the appellant could not reasonably have been expected, within the meaning of Article 12(4) RPBA, to have filed documents E6 to E8 in the opposition proceedings, simply because it could not objectively predict, firstly, that feature (h'''') would be incorporated into new claim 1, secondly, that the claims of the main request - filed one month before the first-instance oral proceedings - would be admitted into the proceedings and, lastly, that the opposition division would reverse its negative provisional opinion on the patentability of claim 1 on the basis of added feature (h'''') in the way discussed at the oral proceedings and indicated in the appealed decision. Rather, the filing of E6 to E8 is regarded as a legitimate and appropriate reaction to the assessment of inventive step conducted in the decision under appeal for amended claim 1 in the sense of cases T 238/92 (Reasons 2.2), T 1146/06 (Reasons 4.1), T 295/08 (Reasons 2.3), T 406/09 (Reasons 2.1.3), T 828/14 (Reasons 1) and, above all, T 241/10 (Reasons 5; based on an almost identical factual situation), with the aim of filling the gaps in the appellant's chain of argument by providing the missing evidence suggested by the decision under appeal (see point 1.4.1 above). Such an attempt to improve its position in the appeal proceedings cannot, moreover, constitute any abuse of procedure.

2.2 Substantive aspects

2.2.1 As regards the substantive relevance of prior-art documents, the board considers that where evidence is belatedly filed on appeal as an objectively appropriate reaction to the impugned decision (see point 2.1.3 above), such evidence should be sufficiently relevant to the outcome of the assessment of the patentability of the subject-matter claimed. However, a final decision on the relevance of these documents should not be given in the event that the case is then remitted to the first-instance department for further prosecution upon admission. Otherwise, the latitude of examination by the first-instance department would be unduly restricted (see e.g. T 736/99, Reasons 2.3.4). In other words, it would suffice in such cases to demonstrate that it is prima facie not unlikely that the admission of such fresh evidence could change the outcome of the assessment of the first-instance department.

2.2.2 As to the technical relevance of documents E6 to E8 in the present case, the appellant argued at the oral proceedings before the board that those documents - whether taken as evidence of the skilled person's common general knowledge or as documents to be combined with the closest prior art TPO-1 - did indeed disclose feature (h''''), and that the skilled person in the field of telecommunication networks would consider and combine any of them with TPO-1 in order to solve an objective technical problem such as "how to implement the look-up table of TPO-1", as formulated by the appellant.

In particular, the appellant submitted that document E6 taught the use of an automated discovery process, initiated by the workstation, to detect and store the upstream and downstream communication paths as regards the constituent nodes (see e.g. page 17, lines 14-30; page 18, lines 12-25), that document E7 demonstrated the detection and maintenance of a list of available relay stations and corresponding links through the exchange of control packets and the storage of forwarding addresses (see e.g. column 3, lines 42-67), and that document E8 taught the execution of an automated route discovery phase, initiated by a source node, to detect and store the corresponding upstream and downstream communication paths via broadcast query and response messages (see e.g. column 8, lines 1-14).

2.2.3 In view of the above, documents E6 to E8 appear to be related to automatically detecting and storing the overall network structure of mobile networks and thus to feature (h'''') of present claim 1. Thus, the board considers that they address the differences between present claim 1 and the disclosure of TPO-1, which were decisive for the decision of the opposition division. Thus, they appear to be sufficiently relevant to possibly influence the assessment of inventive step of claim 1 of the present main request. Consequently, the board decided to admit prior-art documents E6 to E8 into the appeal proceedings (Article 114(2) EPC and Article 12 RPBA).

3. Remittal of the case for further prosecution

Now that prior-art documents E6 to E8, which obviously could not have been considered by the opposition division in its assessment of inventive step, have been admitted into the proceedings, the next question is whether the board - in exercising its discretion under Article 111(1) EPC - should now decide itself on the patentability of new claim 1, in the light of those documents, or whether it should remit the case to the opposition division for further prosecution. In that regard, procedural expediency has now to be balanced against procedural fairness towards the respondent in the sense of T 931/06 (see Reasons 5), with a view to ensuring that the respondent has sufficient time to prepare a proper defence against the admitted documents.

Since the patentability of new claim 1 could not be examined and decided upon by the department of first instance in the light of prior-art documents E6, E7 and/or E8, the board holds that under the present circumstances - and especially since neither party has objected to remittal - it is not expedient to take a first and final decision on the matter of inventive step, having regard to the additional prior art, in these second-instance proceedings. It therefore decides to remit the case for further prosecution on the basis of the claims of the present main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the main request (claims 1 to 6) as filed with letter dated 9 December 2016.