T 0578/13 - Not admitting documents by OD

Key points

• In this opposition appeal, the OD had not admitted certain documents filed after the opposition period. The Board finds the OD's reasoning to be insufficiently reasoned. 
• " The Board further notes that the appellant's arguments concerning why it filed D4 and E21 to E34 after expiry of the opposition period and why they were prima facie relevant [,] were not addressed in the impugned decision. Ignoring those arguments infringes Article 113(1) EPC, as there is no indication that they were heard at all by the Opposition Division. This constitutes a further substantial procedural violation." 

EPO T 0578/13 -  link

3. Non-admission of E21 to E34 and D4 at first instance

3.1 In the first-instance proceedings the appellant argued that the subject-matter of claims 1 and 17 lacked novelty over its own prior uses of welded dispensers for packing guide wires, illustrated by E0 to E34. For example, E2 comprises the following drawing. FORMULA/TABLE/GRAPHIC

The appellant further relied on documents D1 to D4.

D4 and E21 to E34 were filed after expiry of the opposition period, with letter dated 21 September 2012. In that letter the appellant argued that the filing was in response to the respondent's filing of auxiliary requests and to the Opposition Division's preliminary opinion expressed in an annex to the summons to oral proceedings. The appellant reaffirmed this in the subsequent oral proceedings before the Opposition Division (minutes, point 4.2). More particularly, it argued that E21 to E34 served "only to give further documentation for the arguments and facts earlier submitted", i.e. to support evidence items E0 to E20. The Board notes that several items of evidence filed after expiry of the opposition period are solemn declarations by various customers of the appellant, confirming that they had bought the appellant's products constituting the objects of the alleged prior uses. Moreover, in the letter dated 21 September 2012 the appellant explained in detail (pages 4 to 20 and 23 to 26) why it considered that E21 to E34 and D4 were relevant to its case.

3.2 As far as the admissibility of D4 and E21 to E34 is concerned, in the impugned decision the Opposition Division merely stated the following (point 2 of the reasons):

"The Opposition Division notes that the additional documents introduced with letter of 21.09.2012 have been filed after the nine-month time limit mentioned in Article 99(1) EPC. As they are prima facie not considered more relevant than the documents presented earlier there is no reason to take them into account in the proceedings. Following Article 114(2) these documents - with the exception of the translations into an official language E7A-E11A, E14A-E16A, E18A - are not admitted therefore in the proceedings."

3.2.1 In the Board's view such a statement does not provide sufficient reasoning for not admitting the evidence concerned.

It is established jurisprudence that, when exercising its discretionary power to decide on the admissibility of late-filed evidence, a department of first instance should perform a prima facie analysis of its content. If, on that basis, the evidence is not considered relevant, then that department may decide not to admit it.

In order for that decision to be adequately reasoned, however, the reasons why there is no prima facie relevance should be explained. These are clearly absent in the impugned decision. It follows that the Opposition Division exercised its discretion in an unreasonable way, hence exceeding the proper bounds of its discretion.

This lack of reasoning amounts to a substantial procedural violation, as it contravenes Rule 111(2) EPC.

3.2.2 The Board further notes that the appellant's arguments concerning why it filed D4 and E21 to E34 after expiry of the opposition period and why they were prima facie relevant were not addressed in the impugned decision.

Ignoring those arguments infringes Article 113(1) EPC, as there is no indication that they were heard at all by the Opposition Division. This constitutes a further substantial procedural violation.