T 2607/16 - Only three of the thirty five documents filed

 Key points 

• “Furthermore, as submitted by the proprietor, it is indisputable that the filing behaviour of opponent 2 negatively affected the fairness of the proceedings before the opposition division. Only three of the thirty five documents filed by opponent 2 with its notice of opposition were substantiated therein with regard to their relevance to the grounds on which the opposition was based.”
• The Board therefore does not set aside the decision of the OD to hold D18, filed with the Notice of opposition, to be inadmissible.
• “It is undisputed that the notice of opposition was completely silent with regard to the relevance of D18 (then numbered D7) to the grounds on which the opposition was based. Thus, although it was formally cited within the time limit of Article 99(1) EPC, the opponent did not fulfill its duty in accordance with Rule 76(2)(c) EPC to present its case concerning D18 in the notice of opposition. As a consequence, the board considers D18 duly filed only on the date on which it was substantiated by the opponent, namely with the letter of 27 July 2016. D18 was thus late filed. The opposition division therefore had the discretionary power pursuant to Article 114(2) EPC to decide on the admittance of D18 into the proceedings.”

T 2607/16 

https://www.epo.org/law-practice/case-law-appeals/recent/t162607eu1.html

4. Admittance - documents relevant to the grounds for opposition under Article 100(a) and 56 EPC

4.1 D18

4.1.1 D18 is a patent document filed by opponent 2 with the notice of opposition. Its relevance to the grounds on which the opposition was based was however not addressed therein. The opposition division decided not to admit D18 into the proceedings on the grounds that it was not prima facie more relevant than other documents already admitted into the proceedings (contested decision, page 20, penultimate paragraph). Opponent 2 requested that the opposition division's decision not to admit D18 be set aside and the document be admitted into the proceedings.

4.1.2 In assessing whether to overturn the decision of the opposition division not to admit D18, the board must determine whether the opposition division exercised its discretion correctly. It is not the board's task to re-examine the case and to decide whether it would have exercised discretion in the same way. The board overrules the decision of the first instance department only if it either failed to exercise its discretion in accordance with the right principles or exercised its discretion in an unreasonable way (G7/93, OJ 1994, 775, reasons 2.6).

4.1.3 It is undisputed that the notice of opposition was completely silent with regard to the relevance of D18 (then numbered D7) to the grounds on which the opposition was based. Thus, although it was formally cited within the time limit of Article 99(1) EPC, the opponent did not fulfill its duty in accordance with Rule 76(2)(c) EPC to present its case concerning D18 in the notice of opposition. As a consequence, the board considers D18 duly filed only on the date on which it was substantiated by the opponent, namely with the letter of 27 July 2016. D18 was thus late filed. The opposition division therefore had the discretionary power pursuant to Article 114(2) EPC to decide on the admittance of D18 into the proceedings.

4.1.4 As set out above, the opposition division based its decision of not admitting D18 on the ground that it was not prima facie relevant. This is a correct principle for assessing the admittance of a late-filed document.

4.1.6 In view of this observation, the conclusion of the opposition division that D18 was not prima facie more relevant than the documents already on file, is not unreasonable.

4.1.7 The opposition division therefore exercised its discretion in accordance with the right principles and in a reasonable way. There is therefore no reason for the board to overturn the decision not to admit D18 into the proceedings.

4.1.8 Furthermore, as submitted by the proprietor, it is indisputable that the filing behaviour of opponent 2 negatively affected the fairness of the proceedings before the opposition division. Only three of the thirty five documents filed by opponent 2 with its notice of opposition were substantiated therein with regard to their relevance to the grounds on which the opposition was based. With the letter of 6 November 2015 sent in reply to the notices of opposition, the patent proprietor objected to the lack of any reasoned statement with regard to the thirty two remaining documents not substantiated in the notice of opposition, filed detailed arguments in this regard, and requested that said documents not be admitted into the proceedings (point 2 of said letter). Subsequently, in the annex to the summons to oral proceedings dated 21 December 2015 (point 3), the opposition division stated that the filing of said documents without substantiation ran counter inter alia to the principle of good faith, and therein requested that the relevance of the documents be indicated clearly and in detail by opponent 2 in the shortest possible time in order to allow the parties and the opposition division to take position thereon. Despite the patent proprietor's detailed submissions and the explicit request of the opposition division as set out above, a response was filed by opponent 2 only on 27 July 2016, the final day for making written submission pursuant to Rule 116 EPC, and more than eight months after the initial objection was raised by the patent proprietor. This filing behavior was unfair to the patent proprietor and further justifies the decision of the opposition division not to admit D18.

4.1.9 Additionally, whether document D18 was regarded as the closest prior art during examination proceedings, as argued by opponent 2, does not play a role in the question of admittance. Documents which may have played a part in pre-grant proceedings and the objections for which they were previously used are not automatically part of the opposition proceedings. Furthermore, the fact that D18 was cited in the contested patent is also irrelevant, as it was introduced therein during examination to comply with the requirements of Rule 42(1)(b) EPC.| 4.1.10 Consequently, the board decided to rejectthe request of opponent 2 to set aside the opposition division's decision not to admit D18 and to admit the document into the proceedings. |