T 1682/15 - No abusive disclosure

Key points

• The patentee submitted an argument that a prior art document D28 had to be disregard under Article 55(1)(a) EPC (disclosures due to evident abuse are non-prejudicial). The Board does not admit the argument (should have been raised before the OD), but still gives some comments on the merits.
• The patentee's argument, that the OD would not have departed from G 3/98, that the non-prejudicial disclosure must be no earlier than six months preceding the filing date (not the priority date), is no reason for admitting the argument under Article 12(4) RPBA. In particular, the opponents were now "confronted with the fact that [D28] might not be taken into consideration for the first time in appeal proceedings." 
• The Board also considers it no so clear that D28 was due to evident abuse, in particular because of lack of evidence about the details of the confidentiality obligation of the author of D28.

EPO T 1682/15 - link

Reasons for the Decision

1. The appeal is admissible.

2. Oral proceedings were held and continued in the absence of the duly summoned respondent 4 in accordance with Article 15(3) RPBA and Rule 115(2) EPC.

4. Admission of submissions relating to Article 55(1)(a) EPC

4.1 In accordance with Article 12(4) RPBA, the board has the discretion to hold inadmissible facts, evidence or requests which were presented in the statement of grounds of appeal, but which could have been presented in the first instance proceedings.

4.2 With the statement setting out its grounds of appeal the appellant, for the first time, requested that document (28) be disregarded, since its disclosure was due to an evident abuse within the meaning of Article 55(1)(a) EPC. In this context the appellant also requested a re-referral to the Enlarged Board of Appeal. In the appellant's view the Enlarged Board, in its decision G 3/98 (OJ EPO 2001, 62), erroneously established that, for the calculation of the six-month period referred to in Article 55(1)(a) EPC, the relevant date was the date of the actual filing of the European patent application, and not the priority date.

4.3 The submissions in relation to Article 55(1)(a) EPC were not presented before the opposition division, although document (28) had been filed by opponent 5, now respondent 5, with its notice of opposition of 9 October 2013 and, throughout the opposition proceedings, document (28) was considered to be highly pertinent. Moreover, all the evidence filed by the appellant in support of the alleged evident abuse lay within its own knowledge and sphere and had already been available to it when document (28) was first cited in the opposition proceedings. Accordingly, the board cannot see any reason which could have prevented the appellant from already presenting its submissions concerning an evident abuse during the opposition proceedings.

4.4 The appellant has argued that it did not bring the issue up in front of the opposition division because an opposition division cannot refer questions to the Enlarged Board of Appeal. A further referral would however be necessary in order for the Enlarged Board's previous decision G 3/98 relating to the interpretation of Article 55(1)(a) EPC to be overturned.

In this respect the board notes that the question of a (re-)referral would arise in relation to only one of the prerequisites of Article 55(1)(a) EPC, namely the calculation of the six-month time period. However, other requirements too would have to be met for a disclosure to be disregarded pursuant to Article 55(1)(a) EPC. In particular, it would have to be established whether the alleged evident abuse in relation to the appellant or his legal predecessor is to be considered proven.

The appellant was of the view that the opposition division would, on the basis of the decision G 3/98, have rejected the argument under Article 55(1)(a) EPC due to the publication date of document (28) lying outside the six-month period, and would not have decided on the allegations of the evident abuse.

How the case would have been handled by the opposition division if the submissions had been presented earlier is a matter of pure speculation. In any case, had the issue already been addressed in opposition proceedings, the opponents would have been informed that document (28) might not be taken into consideration as prior art and they could have considered whether or not to focus on a disclosure which uncontroversially constituted prior art rather than on document (28).

Instead, the respondents were confronted with the fact that document (28) might not be taken into consideration for the first time in appeal proceedings.

4.5 In addition, taking the appellant's submissions concerning the evident abuse into consideration by the board would have resulted in entirely new aspects being discussed for the first time at the appeal stage. That would not be in line with the purpose of the inter partes appeal procedure, which is mainly to give the losing party an opportunity to challenge the decision of the opposition division on its merits.

4.6 Even though the foregoing considerations were, in the board's view, sufficient reason to decide that the submissions concerning an evident abuse under Article 55(1)(a) EPC, and the related evidence, should not be considered at the appeal stage, the board has also taken into account whether the proprietor's submissions and evidence were highly relevant and would constitute a clear-cut case.

While the appellant considered the evident abuse clearly established, the respondents questioned the scope of the confidentiality obligations, the sources of information Dr Stamper had used when he wrote the disclosure of document (28), and the absence of permission from the appellant to publish document (28).

Article 7 of the "Physician Consultant Agreement" contained in document (65) does mention the possibility of giving Dr Stamper permission to publish information falling under the confidentiality agreement. The question has been raised whether Dr Stamper asked for such a permission. The appellant has asserted that Dr Stamper did not do so. The respondents have countered that neither is any declaration by Dr Stamper on file nor is there evidence of a civil suit of the appellant against Dr Stamper.

As can be seen from the above, various issues were in dispute and remained unclear on the basis of the evidence filed by the appellant.

4.7 In summary, the submissions in relation to Article 55(1)(a) EPC could have been presented during opposition proceedings. The submissions involve a complex discussion of issues that should have been addressed in opposition proceedings and could possibly have led to a change in the opponents' cases. Furthermore, considering the respondents' arguments brought forward in relation to the evidence provided by the appellant, the board could not straightforwardly establish that an evident abuse in relation to the appellant had actually occurred.

4.8 In view of the above and in exercise of its discretion under Article 12(4) RPBA, the board decided not to admit the appellant's submissions that the disclosure of document (28) had been an evident abuse in relation to the appellant according to Article 55 (1)(a) EPC, and the related evidence in the form of document (65), into the appeal proceedings.

As a consequence, the appellant's request for a referral to the Enlarged Board of Appeal was no longer relevant.