T 0282/18 - Standard textbook CGK not admitted

Key points

• “ With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field.”
• “ The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.”
• The decision does not indicate that the patentee disputed that D7 indeed is a standard textbook. 
• The Board does not admit the document.
• The Board “[in T 1641/11] the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision [T 1641/11] that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.”
• After reviewing the course of the first instance proceedings: “It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007”

T 0282/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180282eu1.html

3. Document D7 - Admission

3.1 With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field. The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.

3.2 The board first notes that there is no element in the decision under appeal that would justify filing, in reaction thereto, document D7 in the appeal proceedings. In particular, the appellant submitted that they were surprised by the opposition division's conclusion in the decision under appeal that the optical variable layer disclosed in document D3 did not constitute an optically variable color-shifting coating as defined in feature 1.7 of claim 1, and that document D7 was filed in reaction thereto. However, as acknowledged by the appellant in the statement of grounds of appeal (sentence bridging pages 3 and 4), feature 1.7 of claim 1 already turned out to be essential during the first-instance opposition proceedings and, therefore, the appellant, during the first-instance proceedings, already had the opportunity to comment on - and, in particular, to file new evidence in respect of - the technical significance of the feature under consideration. It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007 (which applies in the present case according to Article 25(2) RPBA 2020).

As regards decision T 1641/11 referred to by the appellant, the board notes that this decision concerned an ex parte case in which the applicant, with the statement of grounds of appeal, filed two documents as evidence of common general knowledge and that these two documents were admitted into the proceedings by the board deciding on the case (see decision T 1641/11, point 3.6 of the reasons, second and third paragraphs, together with point III of the summary of facts). However, the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.

3.3 In view of these considerations, and since according to Article 12(4) RPBA 2007 the board has discretion not to admit facts and evidence which could have been presented in the first instance proceedings and, in addition, according to Article 12(2) RPBA 2020 (which applies in the present case according to Article 25 RPBA 2020) "a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based", the board decided, in the absence of reasons for doing otherwise, not to admit document D7 into the proceedings.