T 1953/16 - Reviewing the first instance procedure

 Key points

• The opponent files new documents with its Statement of grounds. The Board applies the 'should have been filed' rule of Art. 12(4) RPBA 2007 and reviews the first instance procedure in some detail.
• I think we will see this more often in the future.
• “The opponent's main justification for filing documents D15, D16 and D17 was that the patent proprietor with letter of 14 April 2016, of which the opponent was notified only on 3 May 2016, had introduced a new argument shortly before the oral proceedings before the opposition division which took place on 24 May 2016. According to the opponent, the new argument concerned the structure of the compressor as a whole of D1 and not the rotor in an isolated manner, as had previously been argued by the patent proprietor [].”
• The Board: “Irrespective of the question whether the available period before oral proceedings (21 days) could be regarded as sufficient for carrying out an additional search, the board does not agree with the opponent that the patent proprietor with letter of 14 April 2016 introduced a new argument, which justified the filing of documents D15, D16 and D17 for the first time in the appeal procedure. ”
• The Board cites the Rule 79 response "on page 3 in the fifth paragraph" and analyzes this in detail: "The mention of the compressor contained in the reply [of Patentee] is brief and the specific problems involved in implementing the invention in the compressor of D1 are indeed not further explained. Nevertheless, contrary to the opponent's allegation, the patent proprietor's argument was directed to the structure of the compressor as a whole, not only to the rotor, and the above statement was sufficient for the opponent to realise at the very beginning of opposition proceedings that the patent proprietor was thereby casting doubt on the suitability of document D1 in the assessment of an inventive step"
• It does not help that the OD's preliminary opinion was favorable for opponent.
• The Board leaves open whether the documents at issue are admissible in reply to AR-1 filed shortly before the oral proceedings before the OD, because the Main Request is considered to be inventive (disregarding D15, D16 and D17)
• This indicates that it does not make sense to decide on the admissibility of documents in advance. In other words, a document can be admissible only in connection with some but not all of the claim requests.

EPO T 1953/16 -  link

3. Admittance of documents D15, D16 and D17 into the appeal procedure (Article 12(4) RPBA 2007)

3.1 Documents D15, D16 and D17 were filed for the first time with the opponent's statement setting out the grounds of appeal on 27 October 2016. The patent proprietor has requested that the new documents under Article 12(4) RPBA 2007 not be admitted into the proceedings.

3.2 According to Article 12(4) RPBA 2007 the board has the discretionary power to hold inadmissible evidence which could (and should) have been presented or was not admitted in the first instance proceedings. The provision expresses the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible so as to ensure a fair, speedy and efficient procedure (e.g. T 162/09, point 7 of the reasons and T 724/08, point 3.4 of the reasons). According to the established case law of the Boards of Appeal, the filing of new documents for the first time in the appeal proceedings requires a sound and plausible reason in the specific case, in particular exceptional circumstances that justify the late filing of the respective documents. It follows that, in principle, documents could be admitted in the case of e.g. a normal reaction to a late turn of events in the opposition (oral) proceedings, an exceptional interpretation by the opposition division at a late stage or in the decision, or evident non-allowability in view of the newly cited documents and/or objections (see the Case Law of the Boards of Appeal, 9th edition 2019, V.A.4.11.3).

In the present case, a reason of the type that would justify the filing of documents D15, D16 and D17 for the first time with the opponent's statement setting out the grounds of appeal, however, does not exist.

3.3 The opponent's main justification for filing documents D15, D16 and D17 was that the patent proprietor with letter of 14 April 2016, of which the opponent was notified only on 3 May 2016, had introduced a new argument shortly before the oral proceedings before the opposition division which took place on 24 May 2016. According to the opponent, the new argument concerned the structure of the compressor as a whole of D1 and not the rotor in an isolated manner, as had previously been argued by the patent proprietor (see in particular pages 2 and 3 of the patent proprietor's letter of 14 April 2016), and the short time between becoming aware of the new argument on 3 May 2016 and the date of the oral proceedings on 24 May 2016 made it impossible to perform an additional search.

3.4 Irrespective of the question whether the available period before oral proceedings (21 days) could be regarded as sufficient for carrying out an additional search, the board does not agree with the opponent that the patent proprietor with letter of 14 April 2016 introduced a new argument, which justified the filing of documents D15, D16 and D17 for the first time in the appeal procedure. In the reply to the statement of grounds for opposition filed on 18 March 2015, the patent proprietor on page 3 in the fifth paragraph stated the following:

"Instead, the realization of an air supply for cooling the rotor in a hermetic compressor, as disclosed in D1, would have constituted an almost unsurmountable problem for the skilled person."

The mention of the compressor contained in the reply is brief and the specific problems involved in implementing the invention in the compressor of D1 are indeed not further explained. Nevertheless, contrary to the opponent's allegation, the patent proprietor's argument was directed to the structure of the compressor as a whole, not only to the rotor, and the above statement was sufficient for the opponent to realise at the very beginning of opposition proceedings that the patent proprietor was thereby casting doubt on the suitability of document D1 in the assessment of an inventive step, on the ground that this document was related to a hermetic compressor. Indeed this argument of the patent proprietor was taken into account and discussed by the opponent already in the following communication of 14 September 2015 (see point 2 a) of the communication). It would therefore have been possible and appropriate to submit one or more documents taking account of that argument, in particular by providing a prior art document which was not specifically related to a compressor, as soon as the opponent had been notified of the proprietor's reply to the opposition. The opponent however did not do that. On account of these facts, it cannot be said that the subsequent submission by the patent proprietor on 14 April 2016 contained a new argument, but rather constituted a development of an argument which had already been raised.

3.5 The opponent further submitted that he had no reason to file these documents in the first instance proceedings, since the opposition division's preliminary opinion expressed in the communication accompanying the summons issued on 26 November 2015 was in favour of the opponent. However this fact is irrelevant under the present circumstances. It was the existence of a pertinent argument already in the proceedings which should have given reason to perform an additional search and file evidence against that argument. The opposition division's preliminary opinion was issued after the argument had been introduced by the patent proprietor and after the opponent had decided how to take position on it. In this context, the opponent's further argument is also irrelevant according to which new documents filed shortly before the oral proceedings would most likely not have been admitted by the opposition division into the procedure and it was therefore preferable for him not to file those documents until the appeal stage. Indeed under Article 12(4) RPBA 2007 documents which could have been submitted before the department of first instance and documents which had been submitted but had not been admitted are put on an equal footing. The worst which could have happened by filing these documents in the opposition proceedings, was that they would have been regarded as inadmissible (as noted also in T 876/05, point 2 of the reasons). However, a party filing the evidence first during appeal, would have to overcome the additional hurdle of satisfying the board that its action represented to a fair procedure, i.e. did not amount to a strategic measure for improving its own case against the adverse party (see also T 718/98, point 1.3 of the reasons).

In the present case, the board sees no valid justification for the opponent not having filed this evidence in the first instance proceedings, as the opponent had reason and time to react to the proprietor's above argument already more than one year prior to the date of the oral proceedings before the opposition division.

3.6 Additionally, regarding documents D15 and D16 the opponent has further argued that filing of these documents only at the appeal stage was justified because it was a direct reaction to the interlocutory decision under appeal stating that the then first auxiliary request fulfilled the requirements of the Convention.

Given that the then first auxiliary request (corresponding to the current second auxiliary request) is not a subject of the present decision, it can be left open whether filing of the first auxiliary request in the first instance proceedings shortly before the oral proceedings justified the submission of new documents D15 and D16 only at the appeal stage or not.

3.7 In light of the above, the board has exercised its discretion under Article 12(4) RPBA 2007 not to admit documents D15, D16 and D17 into the appeal procedure.