T 0960/15 - Review of decision to admit

Key points

•  The Board, in the headnote: " In the present case, the Opposition Division decided to consider document D8 and the review of this decision is a primary object of the appeal proceedings " 
• This implies that the Board can find the decision of the OD to be incorrect and hence may hold the document D8 to be inadmissible. 
• Whether the Boards have such power was denied in T 0617/16. 
• " There is, therefore, long-established jurisprudence setting out the Boards' powers to review discretionary decisions, and the limits on those powers that reflect the decisions' discretionary nature. This extends to a discretionary decision to admit a submission, such as D8." 
• " Article 12(2) RPBA 2020 introduced a general definition of the nature and scope of the appeal proceedings in accordance with the established case law (see EPO OJ Supplement 2/2020, explanatory remark, page 33/65). Under this provision (which is applicable, see Article 25(1) RPBA 2020), D8 itself and the parties' cases in respect of its admission into the proceedings belong to "the requests, facts, objections, arguments and evidence on which the decision under appeal was based"." 
• " When reviewing the [OD's] not to disregard it, the Board cannot identify any error in the principles applied, or not applied, by the Opposition Division, or anything unreasonable about it. On the contrary, the Opposition Division demonstrated the relevance it saw in D8, when considering it novelty-destroying in respect of the first auxiliary request. Furthermore, the Opposition Division apparently only needed to read some parts of the extensive D8 to verify its relevance (appealed decision, point 6.1.1)." 
•  "The Opposition Division concluded that claim 4 of the first auxiliary request lacked novelty over D8" 
• 
  

EPO T 0960/15

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/t150960eu1.html

Admission of document D8

1. In the run-up to the oral proceedings before the Opposition Division, the opponent introduced D8 as a new basis for attacking the patented invention's novelty and inventive step. During the oral proceedings, the opponent sought, and the proprietor disputed, the admission of D8. In that regard, the parties appear to have debated, mainly, the relevance and the size of the document (minutes, points 5.7 to 5.9; appealed decision, point 6.1). The Opposition Division considered both these aspects and admitted D8 into the proceedings (appealed decision, points 6.1.1 and 6.2; minutes, point 5.10). The Opposition Division concluded that claim 4 of the first auxiliary request lacked novelty over D8 (appealed decision, point 7; minutes, points 5.11 and 5.12).

2. In the statement of grounds of appeal, while disagreeing with the Opposition Division's exercise of discretion primarily with regard to the document's relevance, the proprietor challenged the decision to admit it into the proceedings (page 6, point III, 1.1). The Board interprets this as a request that the Opposition Division's discretionary decision to admit D8 be set aside.

3. The admission of D8 lay within the Opposition Division's discretion under Article 114(2) EPC. When exercising this discretion, it enjoyed a certain degree of freedom; and the Board should normally not interfere in such a discretionary decision. In particular, it should not do so simply because, under the same circumstances, the Board itself would have decided differently. The Board should only overrule such a decision, if it concludes that the department that took it applied the wrong principles, took no account of the right principles, or exercised its discretion in an unreasonable way, thus exceeding the proper limits of its discretion (see, for example, G 7/93 Late amendments OJ EPC 1994 775, reason 2.6; T 677/08, Payment Processing/SAP, reason 4.3; T 1883/12, No-spill drinking cup/Philips, reason 3.1.2; Case Law of the Boards of Appeal of the European Patent Office, 9th edition, IV.C.4.5.2, V.A.3.5.1 and V.A.3.5.4; and with particular reference to the review of a discretionary decision to admit a document into the proceedings, T 1209/05, Refrigerator oil/NIPPON MITSUBISHI, reason 2).

4. There is, therefore, long-established jurisprudence setting out the Boards' powers to review discretionary decisions, and the limits on those powers that reflect the decisions' discretionary nature. This extends to a discretionary decision to admit a submission, such as D8.

5. Furthermore, since the proprietor was adversely affected by the admission of D8, which document was later found to anticipate the first auxiliary request, the proprietor was within its rights to direct its case to that aspect, or part, of the appealed decision (Article 107, first sentence, EPC).

6. Article 12(2) RPBA 2020 introduced a general definition of the nature and scope of the appeal proceedings in accordance with the established case law (see EPO OJ Supplement 2/2020, explanatory remark, page 33/65). Under this provision (which is applicable, see Article 25(1) RPBA 2020), D8 itself and the parties' cases in respect of its admission into the proceedings belong to "the requests, facts, objections, arguments and evidence on which the decision under appeal was based".

7. Hence, the Board is competent to review the Opposition Division's decision to admit D8, and such a review belongs to the primary object of these appeal proceedings.

8. It thus lay within the Opposition Division's discretion to disregard D8, or not. When reviewing the decision not to disregard it, the Board cannot identify any error in the principles applied, or not applied, by the Opposition Division, or anything unreasonable about it. On the contrary, the Opposition Division demonstrated the relevance it saw in D8, when considering it novelty-destroying in respect of the first auxiliary request. Furthermore, the Opposition Division apparently only needed to read some parts of the extensive D8 to verify its relevance (appealed decision, point 6.1.1).

9. Accordingly, the Board does not set aside the discretionary decision to admit D8, and will take account of this document.