R 0006/20 - (II) Art. 12(4) RPBA 2007

Key points

•  In this petition for review case, the Board did not admit evidence of a public prior use that was filed in appeal under the "could have been filed" prong of Art. 12(4) RPBA 2007 (now Art. 12(6) second sentence RPBA). The opponent/petitioner argues, essentially, that Art.12(4) RPBA violates Art. 113(2) EPC and Article 114(2) EPC (as I understand it).
• The Enlarged Board reviews the preparatory documents of the predecessor of Art.12(4) RPBA 2007, namely Article 10a(4) RPBA 2003. 
• " Article 12(4) RPBA 2007 setting a lower threshold for non-admittance regarding a party's conduct in the prosecution than abuse of process that the petitioner suggested is in line with Articles 114(1) and 113(1) EPC. " 
• The Enlarged Board does not expressly recall that "could have been filed" in Art. 12(4) RPBA is interpreted as "should have been filed in the first instance proceedings". However, understood in that way, general compliance with Art.113(1) EPC and Article 114(2) EPC seems to be a given, especially when adding the clause, as is present in current Art.12(6), " unless the circumstances of the appeal case justify their admittance".

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/r200006eu2

(a) Compliance of Article 12(4) RPBA 2007 (Article 10a(4) RPBA 2003) with Articles 114(1) and 113(1) EPC

The issue

The decision to not admit the evidence of public prior use, in particular documents D7, was based on Article 12(4) RPBA 2007, whose language does not require an assessment of the three criteria, which, according to the petitioner, govern admittance of prior art filed for the first time in the appeal proceedings:

· prima facie relevance

· state of the proceedings (procedural economy),

· reasons for filing late (potential abuse of process).

The EBA understands the petitioner's view in the sense that the Article 12(4) RPBA 2007 criterion "could have been presented in first instance" should be applied in interpreting it in the more concrete terms of, or, rather, effectively replacing it by, these three criteria in view of Articles 114(1) and 113(1) EPC.

Before scrutinising this view below, the EBA notes that lawmakers have a wide-ranging scope of appreciation when adopting laws implementing provisions of the EPC, such as the RPBA on the basis of Article 23(4) EPC.

The aforementioned criteria of Article 12(4) RPBA 2007 provide for a restriction of the principle of ex officio examination enshrined in Article 114(1) EPC. This restriction can be seen as putting Article 114(2) EPC into more concrete terms; pursuant to that provision the EPO "may disregard facts or evidence which are not submitted in due time by the parties concerned."

Lawmakers' intent

The "Decision of the Administrative Council of 25 October 2007 approving amendments to the Rules of Procedure of the Boards of Appeal of the European Patent Office" (OJ EPO 2007, 536), generally referred to as RPBA 2007, renumbered the provisions of the RPBA 2003. Article 12 RPBA 2007 is the renumbered Article 10a RPBA 2003. That provision had been approved by the "Decision of the Administrative Council of 12 December 2002 approving amendments to the Rules of Procedure of the Boards of Appeal of the European Patent Office" (OJ EPO 2003, 61) and adopted by the authority referred to in Rule 10(1) EPC (the "Presidium" of the Boards of Appeal) on 28 October 2002 (CA/133/02 of 12 November 2002). In the following, pertinent excerpts of the explanatory notes to the amendments are reproduced (emphasis added).

Point I.A.3 entitled "Introduction"

The measures aim at achieving the goal of more efficient and shorter appeal proceedings include a more defined and controlled initial phase of proceedings; a more pragmatic exercise of discretion under Article 114 (2) EPC thereafter [see the notes on Article 10b] ;

Point I.B.2, entitled "Written Proceedings"

The intended overall effect of the amendments in Articles 10a and 10b [renumbered to Articles 12 and 13 RPBA 2007] is to prevent "ping pong" submissions and "salami" tactics in written proceedings...

On the adoption of Article 10a RPBA 2003

While Article 10a... provides a cut-off point [after which any further material submitted is ipso facto late], it does not change the present position as regards any material filed after the nine-month opposition period. As at present, parties can have no expectation that anything filed after the end of that period will be automatically admissible and the boards will retain their discretion, as a review instance, to refuse material excluded at first instance or not submitted during first instance proceedings.

Thus the moment in time when a party's case is considered to be complete (so that the board is able to assess a case in its entirety and, subject to oral proceedings, take a decision) is fixed objectively by the rules and no longer subject to the procedural strategy of the parties.

Compliance of Article 12(4) RPBA 2007 with Article 114(1) EPC

It follows from these excerpts of the explanatory notes that, with the amended rules, lawmakers intended to streamline the appeal proceedings. As to Article 10a RPBA 2003, the intention was inter alia to retain, and not to introduce as something new, the boards' discretion to not admit material not submitted during first instance proceedings. The EBA nevertheless notes that Article 10a(4) RPBA 2003 did not include the three above criteria that the petitioner derived from the case law. Only the criterion "no abuse of process" relating to a party's conduct in the prosecution has a corresponding, but less strict, and consequently more encompassing, criterion, i.e. a board's power to not admit submissions that "could have been submitted [or were not admitted] in the first instance". If a board exercises the power in not admitting, then in so doing it holds that a mistake occurred in the conduct of the prosecution.

However, boards are not precluded from adopting over time stricter criteria as to the taking into account of material not submitted during first instance proceedings than those that the petitioner derived from the case law of the 1980s and 1990s cited in the appeal proceedings, in particular T 560/89 and T 258/84 and which are addressed in the decision under review in point 4.3. Such a stricter approach may include, in particular, no longer considering prima facie relevance as an important criterion or as a criterion at all (on the development of the case law over time cf. the opinion in case G 3/08, OJ EPO 2011, 10, headnote 4).

In any case, as for the opposition appeal procedure, the EBA considers the restriction under the aforementioned Articles 10a(4)/12(4) RPBA to be squarely in line with the purpose and legal nature of this procedure as defined by the EBA in G 9/91 and 10/91 (OJ EPO 1993, 408 and 420).

In those decisions (whose reasons are identical in essential part), the EBA held:

18. The purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the Opposition Division have not been based. Furthermore, in contrast to the merely administrative character of the opposition procedure, the appeal procedure is to be considered as a judicial procedure, as explained by the Enlarged Board in its recently issued decisions in the cases G 7/91 and G 8/91 (see point 7 of the reasons). Such procedure is by its very nature less investigative than an administrative procedure.

The restriction under Article 10a/12(4) RPBA is also justified in the light of the purpose following from the above mentioned explanatory notes of being to streamline the appeal proceedings.

Compliance of Article 12(4) RPBA 2007 with Article 113(1) EPC

Article 12(4) 2007 empowering the Board to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings restricts not only the principle of ex officio examination, but also the right to be heard. The restriction of this right is justified for the same reasons as those justifying the restriction of Article 114(1) EPC. The EBA holds that an application of Article 12(4) RPBA 2007 can be made in each specific case that will respect the right to be heard. Whether the application in the case in hand did so will be discussed below.

Conclusion

Article 12(4) RPBA 2007 setting a lower threshold for non-admittance regarding a party's conduct in the prosecution than abuse of process that the petitioner suggested is in line with Articles 114(1) and 113(1) EPC. Non-compliance with this admittance criterion of Article 12(4) 2007, correctly interpreted in a specific case, alone justifies not admitting submissions filed outside of a time limit, without the requirement to assess in addition prima facie relevance of the submissions or the state of the proceedings (procedural efficiency).