T 1614/18 - Late filed but prima facie relevant before the OD

Key points

• First-instance opposition proceedings are a different game than opposition appeals, as illustrated by the present decision.
• "The appellant (patent proprietor) contested the decision of the opposition division to admit the late filed document D6."
• The Board: "the competent department [i.e. the OD] has in fact to take such a late filed and "prima facie" relevant evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated submission."
• The Board adds that this is "stated in the EPO "Guidelines" VI, 2.1"". Presumably, GL E-VI, 2 is referred to: "In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered. If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84).".
• " the Board confirms the conclusion of the opposition division that document D6 is not prejudicial to novelty of claim 1 as maintained."

EPO 

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/t181614eu1.html

Admittance of document D6

8. The appellant (patent proprietor) contested the decision of the opposition division to admit the late filed document D6.

8.1 In this regard the Board finds that the opposition division exercised the discretion foreseen by Article 114(1) EPC according to the correct criterion of the "prima facie" relevance in particular for the assessment of inventive step. As stated in the EPO "Guidelines" VI, 2.1" also cited by the appellant (patent proprietor), the competent department has in fact to take such a late filed and "prima facie" relevant evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated submission. The fact that after discussion at the oral proceedings the suspected relevance was not confirmed does not imply that the discretion was applied incorrectly. Furthermore, as noted by the opposition division, procedural expediency was not an issue since D6 was filed two months before the oral proceedings, and therefore no undue burden affecting negatively the position of the appellant (patent proprietor) in the opposition proceedings can be reasonably invoked. Therefore, the Board does not see any reason to interfere with the discretionary decision of the opposition division to admit document D6. In any case, regardless of the conclusion above and as it will be explained below, document D6 is not prejudicial to novelty or inventive step of the subject-matter of claim 1 of the patent in the version maintained by the opposition division.