T 2049/16 - Review of decision to admit

 Key points

• D2 was filed by the opponent one month before the oral proceedings before the OD and admitted then. Patentee argues that the OD should not have admitted the document because its late filing constituted a tactical abuse of proceedings.
• “The board is not convinced that the opponent's (now: respondent's) behaviour can be deemed an abuse of proceedings. As undesirable as it may be, the filing of additional, allegedly relevant prior art one month before oral proceedings is not uncommon, not least because this is a commonly set time limit for filing written submissions and because parties often start preparing for oral proceedings shortly before that time limit.”
• “The board is not aware of any explicit legal basis that would make it possible to retroactively exclude evidence that has been admitted into the proceedings and decided upon by the department of first instance. In this respect, the board shares the opinion expressed in decision T 617/16”
• See this post here with comments of readers.
• “However, it could be argued that the opposition division's decision to admit document D20 is part of the decision under appeal and as such is part of the appeal under Article 12(2) RPBA 2020 and open to review.”
• “It is doubtful whether the Enlarged Board's statement [ in G7/93 about the Board overruling discretionary decisions of the first instance proceedings] provides a sufficient basis for the possibility, let alone the obligation, for a board to review an opposition division's discretionary decision to admit a late-filed piece of prior art it considered relevant.”
• “The assertion that the late filing of document D20 was an intentional abuse of proceedings does not lead to a different conclusion. This assertion is a mere allegation: as already mentioned above, the board cannot see any clear evidence for an abuse of proceedings. And even if there had been an abuse of proceedings, it is highly questionable, especially in view of Article 114(1) EPC, that the opposition division, after having found the document to be prima facie relevant, should have simply ignored the document and maintained a patent which it considered to be prima facie invalid. There are other, better ways to deal with such a situation, such as the postponement of oral proceedings and a decision on apportionment of costs under Rule 88(1) EPC.”
• Practice point: if you need more time as patentee, request a postponement and if appropriate a cost apportionment. 
• “In summary, the board is of the opinion that document D20 cannot be disregarded in the appeal proceedings. As a consequence, the board has dealt with the novelty objection based on this document”
  
  
• As to whether to admit documents filed by the Rule 116 date: “ the need to avoid the maintenance of European patents which are invalid justifies, in first-instance proceedings, the admittance of documents that, in the opposition division's view, are prima facie relevant.”
  
  
• Note 19.02.2021: see also T 1348/16 where the Board decided the OD's decision to admit D13 filed during the oral proceedings.
  

• EPO T 2049/16 -  link

3. Exclusion of document D20

Document D20 was filed by the opponent (now:

respondent) in a letter received at the EPO on 6 May 2016, i.e. one month before the oral proceedings before the opposition division, which took place on 7 June 2016.

3.1 Admittance by the opposition division

The opposition division admitted the document because, after having heard the parties on this issue, it found it to be prima facie relevant (see page 16, second paragraph of the decision under appeal).

It was argued that the opposition division should not have admitted the document because its late filing constituted a tactical abuse of proceedings.

The board is not convinced that the opponent's (now: respondent's) behaviour can be deemed an abuse of proceedings. As undesirable as it may be, the filing of additional, allegedly relevant prior art one month before oral proceedings is not uncommon, not least because this is a commonly set time limit for filing written submissions and because parties often start preparing for oral proceedings shortly before that time limit. The fact that the document cited was one of the opponent's own patent applications certainly raises the question why it had not been filed at an earlier stage of the proceedings, but wilful delaying is not the only possible explanation for its late filing. Nonetheless, the board does not wish to engage in speculation on whether it is more likely than not that the opponent was aware of document D20 or its relevance for the case in hand when filing the opposition.

The board understands that the short amount of time between the filing of document D20 and the oral proceedings created difficulties for the appellant, not least because the patent proprietor is Japanese and there was a second - Japanese - law firm involved in the case. The board is aware of the difficulties involved in such a set-up, but the appellant did not inform the opposition division that it could not deal with the new procedural situation without a postponement of the oral proceedings. Therefore, its criticism that the opposition division did not postpone the oral proceedings appears to be unfounded.

The board is also aware of the inherent asymmetry between patent proprietors' and opponents' procedural situations in opposition and opposition appeal proceedings that should be taken into account in discretionary decisions on the admissibility of late-filed evidence and requests. However, this does not mean that highly relevant but late-filed prior art can never be admitted.

3.2 Possibility to reverse the admittance on appeal

The board is not aware of any explicit legal basis that would make it possible to retroactively exclude evidence that has been admitted into the proceedings and decided upon by the department of first instance. In this respect, the board shares the opinion expressed in decision T 617/16 of 10 July 2020, reasons 1.1.1, and the decisions cited in support. The appellant conceded that there was no proper legal basis for a reversal of the admittance.

However, it could be argued that the opposition division's decision to admit document D20 is part of the decision under appeal and as such is part of the appeal under Article 12(2) RPBA 2020 and open to review.

In the context of the review of discretionary decisions taken by the departments of first instance, reference is sometimes made to decision G 7/93 of 13 May 1994 (OJ EPO 1994, 775). In this case, the Enlarged Board of Appeal considered a situation where an examining division had refused to admit amendments after the applicant had given its approval to the notified text pursuant to Rule 51(4) EPC 1973. The Enlarged Board made the following statement (see reasons 2.6):

"In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion."

However, it has to be noted that decision G 7/93 deals with a completely different situation (namely the discretionary decision not to admit amendments). Moreover, it is clear from the above quote alone that the Enlarged Board did not intend to make a general statement but rather was considering particular circumstances relating to the admission of amendments in the advanced stages of grant proceedings. It is doubtful whether the Enlarged Board's statement provides a sufficient basis for the possibility, let alone the obligation, for a board to review an opposition division's discretionary decision to admit a late-filed piece of prior art it considered relevant.

Another important aspect to be taken into account is the principle of examination by the EPO of its own motion, enshrined in Article 114(1) EPC. This principle also applies to opposition proceedings, as explained in decision G 9/91 of the Enlarged Board of Appeal, reasons 16 (OJ EPO 1993, 408). The Enlarged Board noted that this established practice is aimed at avoiding the maintenance of European patents which are invalid, and confirmed that an opposition division may, pursuant to Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC [1973] or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99(1) EPC. Although this option is mitigated to some extent by Article 114(2) EPC, according to which the EPO "may disregard facts or evidence which are not submitted in due time by the parties concerned", the need to avoid the maintenance of European patents which are invalid justifies, in first-instance proceedings, the admittance of documents that, in the opposition division's view, are prima facie relevant.

This is exactly what motivated the opposition division's decision to admit document D20. The decision was based on the correct criteria (prima facie relevance) and there is no reason to believe that the division exercised its discretion in an unreasonable way.

In principle, it is possible that the opposition division's assessment of the relevance of document D20 was incorrect and that the document was not actually relevant. However, the opposition division's possible error of judgement does not lead to a lasting adverse effect for the appellant because an irrelevant document, despite being admitted into the proceedings, cannot stand in the way of the board's maintenance of the patent.

The assertion that the late filing of document D20 was an intentional abuse of proceedings does not lead to a different conclusion. This assertion is a mere allegation: as already mentioned above, the board cannot see any clear evidence for an abuse of proceedings. And even if there had been an abuse of proceedings, it is highly questionable, especially in view of Article 114(1) EPC, that the opposition division, after having found the document to be prima facie relevant, should have simply ignored the document and maintained a patent which it considered to be prima facie invalid. There are other, better ways to deal with such a situation, such as the postponement of oral proceedings and a decision on apportionment of costs under Rule 88(1) EPC.

3.3 Conclusion

In summary, the board is of the opinion that document D20 cannot be disregarded in the appeal proceedings. As a consequence, the board has dealt with the novelty objection based on this document (see point 4.2 below).