T 0319/19 - It would be inequitable

Key points

• “Article 12(4) RPBA 2007 applies [] when assessing whether the Board should exercise its discretion not to admit documents D13-D16.
• “According to established case law, documents filed with the statement of grounds of appeal should not be held inadmissible if they are an appropriate and immediate reaction to developments in the previous proceedings, for example where they give the losing party in the opposition proceedings an opportunity to fill in the gaps in its arguments by presenting further evidence on appeal.
• “In the case at hand, the filing of documents D13-D16 is a normal and legitimate reaction to the admission of the main request filed during oral proceedings in opposition. Indeed the main request [filed during the oral proceedings before the OD and] admitted by the opposition division comprises new features taken from the description which were not foreseeable by the appellant (opponent). The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division. It is therefore legitimate for the appellant to file documents D13-D16 at the earliest possible occasion that is with the statement of grounds of appeal. It would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents. Such a course of action would effectively tie the hands of the appellant in appeal to only base their arguments on previously cited documents, having first given the respondent a free hand to amend the claim based on the description at the last moment in opposition proceedings (see T 0113/12).
• A question is if this case law will also be applied under Art.12(4) RPBA 2020. On the one hand, Art.12(4) RPBA 2020 is intended to introduce a new first level of convergence. On the other hand, if “it would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents” under the RPBA 2007, this would be the same under the RPBA 2020, it seems.
• Some other Boards may consider as a factor whether the opponent requested a break during the oral proceedings before the OD after the new amended MR was admitted by the OD. It is not clear to me if the opponent could be expected by other Boards to request adjournment of the oral proceedings before the OD in order to have time to find and file D13-D16. The present Board implicitly seems to answer this question in the negative by finding that: “The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division.”

EPO - T 0319/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190319eu1.html

2.4 Admissibility of D13, D14, D15 and D16 - Article 12(4) RPBA 2007

The Board exercises its discretion under Rule 12(4) RPBA 2007 to admit into the appeal proceedings documents D13-D16.

2.4.1 The respondent submitted that documents D13-D16 filed with the statement of grounds of appeal were late filed and should not be admitted into the appeal proceedings as the documents were not prima facie relevant, i.e. the documents would not change the outcome of the decision, and as they could not be regarded as a legitimate reaction to the decision of the opposition division.

2.4.2 As the statement of grounds of appeal was filed before 1 January 2020, Article 12(4) RPBA 2007 applies (pursuant to Article 25(2) RPBA 2020) when assessing whether the Board should exercise its discretion not to admit documents D13-D16.

According to established case law, documents filed with the statement of grounds of appeal should not be held inadmissible if they are an appropriate and immediate reaction to developments in the previous proceedings, for example where they give the losing party in the opposition proceedings an opportunity to fill in the gaps in its arguments by presenting further evidence on appeal (see cases reported in Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, V.A.4.13.1).

In the case at hand, the filing of documents D13-D16 is a normal and legitimate reaction to the admission of the main request filed during oral proceedings in opposition. Indeed the main request admitted by the opposition division comprises new features taken from the description which were not foreseeable by the appellant (opponent). The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division. It is therefore legitimate for the appellant to file documents D13-D16 at the earliest possible occasion that is with the statement of grounds of appeal. It would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents. Such a course of action would effectively tie the hands of the appellant in appeal to only base their arguments on previously cited documents, having first given the respondent a free hand to amend the claim based on the description at the last moment in opposition proceedings (see T 0113/12).

The Opposition Division held that the subject-matter of claim 1 involved an inventive step starting from D1, D9 and D12 in combination with common general knowledge. The appellant submitted documents D13-D16 to provide evidence of common general knowledge at the priority date of the patent and/or to combine D13-D16 with the documents D1 or D12, which were considered as possible closest prior art. Documents D13-D16 thus do not even fundamentally change the appellant's inventive step objections presented in opposition.