T 0803/20 - Review of decision to admit

Key points

• "The board notes that documents E9 and E9a were admitted into the opposition proceedings by the opposition division and therefore became part of the opposition proceedings. 
• "The board further notes that while under Article 12(6) RPBA 2020, ... it is possible to admit documents that were not admitted in the first-instance proceedings, there is no basis in the said provision or elsewhere in the RPBA or the EPC for not admitting documents which were admitted in the first-instance proceedings. Therefore, the board takes the view that it has no discretion not to admit documents E9 and E9a into the appeal proceedings under Article 12(4) or (6) RPBA 2020. However, the opposition division's discretionary decision to admit these documents is open to review. When reviewing, it must be taken into account that in the case of discretionary decisions, the opposition division's exercise of discretion is usually reviewable only to a limited extent (see Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.1). Such a discretionary decision should only be overruled in appeal if the discretion has been exercised according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. "
• "The Board cannot see that the opposition division exercised its discretion incorrectly."
• As a comment, and upon giving the topic some thought over the last months, I think the decision to admit as such is not a violation of the right to be heard but possibly a subsequent lack of a suitable opportunity to reply for the other party before the OD took its decision. This can be remedied by setting aside the impugned decision so that the OD can give the other party a more complete opportunity to reply and take a new decision based on the admitted document and the other party's reply.
  
  
• The Board considers AR-1 to lack an inventive step (over E9 and common general knowledge) and remits the case, against the protest of the opponent. "The appealed decision only dealt with objections to claim 1 of the patent as granted (main request) and the present first auxiliary request. In the case at hand, examining new features and deciding whether they comply with all the requirements of the EPC goes beyond the task of an appellate instance. The "special reasons" within the meaning of Article 11 RPBA 2020 are that it would be unduly burdensome for the board to have to deal with six auxiliary requests for the first time in the appeal proceedings and that the opponent had raised several objections under Articles 54(1), 56, 84, 123(2) and/or 123(3) EPC against at least some of these six auxiliary requests during the written procedure. Moreover, contrary to what the opponent suggested, there is no legal basis for the board to limit in its remittal decision the scope of further examination by the opposition division to the current second to fifth auxiliary requests."

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t200803eu1.html

2. Admittance of documents E9 and E9a

The board is of the view that that it has no discretion not to admit documents E9 and E9a into the present appeal proceedings. Therefore, these documents are taken into account in the present appeal proceedings.

2.1 Documents E9 and E9a were filed by the opponent with letter dated 10 October 2019, i.e. after the expiry of the opposition period on 20 September 2018.

2.2 The patentee objected to the admission of documents E9 and E9a for the following reasons:

2.2.1 Documents E9 and E9a were submitted by Mr Steffen Strauss in the name of Baumer Innotec AG. According to the patentee, since "the Opponent has not established that Baumer Innotec AG and, in particular, Mr Steffen Strauss has any right to represent the Opponent" (see P1, page 7, third paragraph), documents E9 and E9a were not validly filed.

2.2.2 According to the patentee, E9 and E9a were late-filed and "[t]here is no justification for the late filing of these documents" (see P1, page 8, sixth paragraph). Indeed, contrary to the justification given by the opponent, according to which the amendments made to the claims in the first and second auxiliary requests, filed on 8 February 2019, required a new search, the patentee was of the opinion that these amendments were entirely foreseeable and did not justify a new search (see P1, page 8, second paragraph).

2.2.3 According to the patentee, E9 was not prima facie relevant since E9 did not relate to boxes and since it did not disclose features 1.3 and 1.6. "Late-filed evidence not filed in due time should only be admitted in the event that it reveals without further investigation (i.e. prima facie) that it is relevant, and document E9 therefore should not have been admitted into the proceedings" (see P1, page 9, second but last paragraph; highlighted in the original).

2.3 The opposition division admitted E9 and E9a into the proceedings for the following reasons:

In spite of E9 and E9a being filed after the expiry of the opposition period, the opposition division decided to admit E9 and E9a into the proceedings essentially for the reason that E9 seemed "prima facie relevant and even more relevant than the other documents already in the proceedings" (see appealed decision, point II.15.3). Moreover, it had "no doubts that Mr Strauss is qualified to represent the Baumer hhs GmbH and as such is authorized to file new documents into the proceedings" (see appealed decision, point II.15.3).

2.4 The board notes that documents E9 and E9a were admitted into the opposition proceedings by the opposition division and therefore became part of the opposition proceedings.

The board further notes that while under Article 12(6) RPBA 2020, which is applicable in the case at hand pursuant to Article 25(1) and (2) RPBA 2020, it is possible to admit documents that were not admitted in the first-instance proceedings, there is no basis in the said provision or elsewhere in the RPBA or the EPC for not admitting documents which were admitted in the first-instance proceedings. Therefore, the board takes the view that it has no discretion not to admit documents E9 and E9a into the appeal proceedings under Article 12(4) or (6) RPBA 2020. However, the opposition division's discretionary decision to admit these documents is open to review. When reviewing, it must be taken into account that in the case of discretionary decisions, the opposition division's exercise of discretion is usually reviewable only to a limited extent (see Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.1). Such a discretionary decision should only be overruled in appeal if the discretion has been exercised according to the wrong principles, or without taking into account the right principles, or in an unreasonable way.

2.5 The Board cannot see that the opposition division exercised its discretion incorrectly.

2.5.1 Concerning the issue of whether documents E9 and E9a were filed by a person authorised to represent the opponent, reference is made to the explanations given in point 1.2 above, from which it is clear that E9 and E9a were validly filed by Mr Steffen Strauss as the opponent's professional representative.

2.5.2 The opponent submitted during the first-instance opposition proceedings (see opponent's letter dated 10 October 2019, page 3, first paragraph) that the amendments made to the claims of the first and second auxiliary requests, both filed on 8 February 2019, justified a new search since the amended features did not correspond to features of dependent claims but were taken from the description. E9 was found during that new search.

The board agrees with the opponent that amendments to claims which were taken from the description may justify a new search for these amended features. If new documents are found during that new search, which the opposition division considers to be prima facie relevant, they may be admitted into the proceedings at the opposition division's discretion. The board currently sees no undue exercise of discretion in the opposition division's decision to admit E9 and E9a into the proceedings.

2.6 In view of the above, the board sees no reason to overrule the opposition division's discretionary decision to admit documents E9 and E9a into the opposition proceedings.