T 0435/20 - Admissibility rules for OD

Key points

• This decision contains a number of important points regarding the admissibility rules for procedures before the OD.
•  "The board considers that the opposition division decided according to the wrong principles and disregarded the principles of procedural fairness and of equal treatment of the parties in not admitting documents D59 to D62 and D81 to D90. The reasons are as follows."
• The OD had also held evidence inadmissible submitted by the opponents on a point where the preliminary opinion of the OD was in their favour. The Board:   "the mere fact that the opposition division's preliminary opinion was positive for one party cannot in itself justify not admitting any further documents by this party which are filed by the final date set by the opposition division for making written submission under Rule 116(1) EPC. " (emphasis added)
• "the fact that the opposition division's preliminary opinion was negative for the appellant but positive for the respondents cannot justify a different treatment of the parties, since a preliminary opinion is neither binding nor definitive."
• The opponents filed a declaration D81 to support an earlier argument. The held the declartion, with annexes, inadmissible on the grounds iner alia that "the arguments of the declaration ... (D81) ... are reflected in the representative's arguments in the [accompanying] letter" 
• The Board: "arguments submitted by a party's professional representative do not qualify as means of giving evidence under Article 117(1) EPC and may therefore have a different weight depending on whether or not they are supported by evidence in the form of a declaration by a technical expert accompanied by evidentiary documents supporting the content of the declaration. Accordingly, the opposition division was mistaken in holding that the declaration D81 with supporting documents on the one hand, and the representative's arguments on the other were equivalent and that this could justify non-admittance of [declaration D81].
• The opponents had filed post-published evidence under sufficiency, which was held inadmissible on that ground by the OD. The Board: " consideration of a document submitted in substantiation of an allegation of fact does not depend on whether or not the document forms part of the state of the art (see CLBA, section III.G.4.1). The board therefore does not agree with the opposition division that, as a matter of principle, post-published evidence is prima facie unsuitable for the substantiation of allegations of verifiable facts in the context of sufficiency of disclosure."
• I note that the OD reasoned that: "documents D82 to D90 "were published years after the priority date of the present application and are prima facie not suitable to establish the general knowledge and the skills of the skilled person required at the date of filing which is discussed in this declaration". 
• The OD also violated the "principles of procedural fairness and of equal treatment of parties": "as noted above, documents D81 to D90 had been filed as direct and immediate response to new evidence, submitted by the appellant on the last day for making written submissions under Rule 116 EPC. In admitting the late filed documents D80 and its supporting documents D64 to D79 into the proceedings but not admitting documents D81 to D90 filed by the respondents in direct response, the opposition division did not respect the principles of procedural fairness and of equal treatment of parties."
• "Furthermore, prima facie relevance is to be assessed with taking into account the outcome of the proceedings (see CLBA, IV.C.4.5.3) and the opposition division gave no reasons why this criterion was not fulfilled for documents D59 to D62 [filed by the opponents]. Accordingly, the board cannot assess whether the opposition division has exercised its discretion in this respect correctly."
• The OD decided to revoke the patent, so this remark is not clear to me.
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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/t200435eu1.html

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is admissible.

The respondents' request to overrule the decision of the opposition division not to admit documents D59 to D62 and D81 to D90 into the proceedings

2. It is established case law that if an opposition division is required under the EPC to exercise its discretion in certain circumstances, it should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal and, consequently, if a discretionary decision of the opposition division is challenged on appeal, it is not the task of the board to review all the facts and circumstances as if it were in the place of the opposition division and to decide whether or not it would have exercised discretion in the same way. The board should therefore overrule the way in which the opposition division exercised its discretion only if it concludes that the opposition division did so according to the wrong principles or without taking into account the right principles, or that it exercised its discretion in an unreasonable way and thus exceeded the proper limit of its discretion (see Case Law of the Boards of Appeal, 9th edition 2019, ("CLBA"), V.A.3.5.1 b)). Article 12(6) RPBA reflects this case law by referring to "an error in the use of discretion".

Documents D59 to D62

3. Documents D59 to D62 were filed by the respondents on the final date for making written submissions fixed by the opposition division pursuant to Rule 116(1) EPC. Documents D59 and D60 were cited as technical evidence for the relevance of the HCDR3 in antigen binding. Document D61 was cited as technical evidence for similarity of proteins with homologous sequences and document D62 was cited as technical evidence for epitope mapping methods.

4. The opposition division held that these documents were filed after expiry of the nine-month period stipulated in Article 99(1) EPC and hence late. In relation to these documents, the opposition division stated that it was of the "opinion that in view of the preliminary opinion of the OD, being in favour of O2/O3 [the respondents] and in view of the fact that said documents are not prima facie more relevant then [sic] the documents already submitted by the opponents with their notices of opposition" and decided not to admit them into the opposition proceedings in the exercise of its discretion under Article 114(2) EPC (see decision under appeal, page 4, first and fourth paragraph).

Documents D81 to D90

5. On the final date for making written submissions fixed by the opposition division pursuant to Rule 116(1) EPC, the appellant filed a declaration of a technical expert (document D80) and documents referred to in that declaration.

6. Ten days prior to the date of oral proceedings and hence after the date fixed by the opposition division pursuant to Rule 116(1) EPC and in reaction to the above mentioned filing by the appellant, the respondents filed a declaration of a technical expert (document D81) and documents referred to in therein (documents D82 to D90).

7. The opposition division held that documents D81 to D90 were filed late in view of the nine-month period stipulated in Article 99(1) EPC. Considering that "the arguments of the declaration ... (D81) as a reply to the declaration ... (D80) are reflected in the representative's arguments in the [accompanying] letter" and that documents D82 to D90 "were published years after the priority date of the present application and are prima facie not suitable to establish the general knowledge and the skills of the skilled person required at the date of filing which is discussed in this declaration" it decided not to admit documents D81 to D90 into the opposition proceedings in the exercise of its discretion under Article 114(2) EPC.

8. On the other hand, considering that the appellant's documents D64 to D80 had been filed in "reaction to the negative preliminary opinion of the OD" and further, that the declaration D80 "can be seen as a reply to the declaration ... (D21, filed by O1 with the notice of opposition)", and also that "the documents [D64 to D79 cited in D80] were published at the latest in the priority year", the opposition division admitted D64 to D80 into the opposition proceedings in the exercise of its discretion under Article 114(2) EPC.

9. The board considers that the opposition division decided according to the wrong principles and disregarded the principles of procedural fairness and of equal treatment of the parties in not admitting documents D59 to D62 and D81 to D90. The reasons are as follows.

10. Firstly, the mere fact that the opposition division's preliminary opinion was positive for one party (see point 4. above) cannot in itself justify not admitting any further documents by this party which are filed by the final date set by the opposition division for making written submission under Rule 116(1) EPC. Furthermore, prima facie relevance is to be assessed with taking into account the outcome of the proceedings (see CLBA, IV.C.4.5.3) and the opposition division gave no reasons why this criterion was not fulfilled for documents D59 to D62. Accordingly, the board cannot assess whether the opposition division has exercised its discretion in this respect correctly.

11. Secondly, arguments submitted by a party's professional representative do not qualify as means of giving evidence under Article 117(1) EPC and may therefore have a different weight depending on whether or not they are supported by evidence in the form of a declaration by a technical expert accompanied by evidentiary documents supporting the content of the declaration. Accordingly, the opposition division was mistaken in holding that the declaration D81 with supporting documents on the one hand, and the representative's arguments on the other were equivalent and that this could justify non-admittance of

documents D81 to D90.

12. Thirdly, consideration of a document submitted in substantiation of an allegation of fact does not depend on whether or not the document forms part of the state of the art (see CLBA, section III.G.4.1). The board therefore does not agree with the opposition division that, as a matter of principle, post-published evidence is prima facie unsuitable for the substantiation of allegations of verifiable facts in the context of sufficiency of disclosure.

13. Fourthly, as noted above, documents D81 to D90 had been filed as direct and immediate response to new evidence, submitted by the appellant on the last day for making written submissions under Rule 116 EPC. In admitting the late filed documents D80 and its supporting documents D64 to D79 into the proceedings but not admitting documents D81 to D90 filed by the respondents in direct response, the opposition division did not respect the principles of procedural fairness and of equal treatment of parties.

14. Finally, the fact that the opposition division's preliminary opinion was negative for the appellant but positive for the respondents cannot justify a different treatment of the parties, since a preliminary opinion is neither binding nor definitive.

15. Since the opposition division's decision not to admit documents D59 to D62 and documents D81 to D90 into the opposition proceedings suffered from an error in the use of discretion, the board decided to admit documents D59 to D62 and D81 to D90 into the appeal proceedings (Article 12(6) RPBA).