T 0205/22 - No power to disadmit admitted evidence

Key points

• "In view of the above considerations, the present board concludes that there is no basis for overruling a decision to admit late filed evidence by the first instance (cf. Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.4). Moreover, since there seems to be no divergence in the position of the different boards in this respect, the present board does not see any reason to refer a question to the Enlarged Board. "
• "While decision T 2049/16 formulates the question of whether there is a discretion to overrule a decision to admit late filed evidence (Reasons 3.2), it then points out that G 7/93 concerns the overruling of a decision not to admit documents, and that the EBA did not intend to make a general statement to be applied to other situations. Indeed, this decision also contradicts the respondent's position when it concludes that overruling the admission of documents would be inconsistent with the principle of examination by the EPO of its own motion under Article 114(1) EPC. Moreover, as also pointed out in Reasons 3.2 of T 2049/16, if a document is admitted on the basis that it is considered to be prima facie relevant but it turns out that it is in fact not relevant, admitting the document would be unlikely to negatively affect proprietor's position."
• It should be noted that not giving the other party a sufficient opportunity to comment on the admitted document can be a substantial procedural violation and a reason for setting aside the appealed decision.
  
  
• " the Board would like to stress that since the opposition was rejected, there was no need for the patentee to file auxiliary requests before the opposition division, and a request filed at the beginning of the appeal proceedings cannot be rejected solely on the ground that it should have been submitted earlier (cf. T 141/20, headnote; T 1758/21,
  Reasons 7.4 and T 2202/21, Reasons 2.2.6)." 

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220205eu1

2. Overruling of the admittance of evidence by the first instance

2.1 The respondent requested that the division's decision to admit D30, D30a and D32 be overruled. While some Boards had concluded that there was no legal basis for overruling the admittance of late filed documents by the first instance and the general rule was that a correctly exercised discretion should not be reviewed, decision G 7/93 indicated that an incorrect exercise of discretion could be overruled. This was confirmed in decision T 2049/16, which argued (Reasons 3.2) that the decision to admit late filed documents could be considered as part of the contested decision and was thus subject to review. The possibility of overruling the admittance of late filed documents was also implicitly acknowledged in T 1652/08, T 572/14 and T 2197/11. While in these decisions it was concluded that the admittance of late filed evidence had been correct, the fact that the issue was discussed implied that there was a discretion in this respect. If the Board disagreed with this argument, a question should be referred to the Enlarged Board of Appeal, as it was clear that this was a fundamental point of law.

2.2 The Board maintains its position expressed in the preliminary opinion that there is no legal basis for disregarding the evidence on which the contested decision was based (Article 12(2) RPBA). In particular, Article 12(4) RPBA is not applicable, as this provision is limited to amendments to the case, i.e. to documents which were not part of the contested decision. The provisions of Article 12(6) RPBA are also not applicable, because they relate to the Board's discretion to admit evidence not admitted at first instance if the decision to disregard the evidence was erroneous. The Board is not aware of other legal provisions that would justify disregarding evidence that was admitted and is part of the contested decision.

2.3 While decision T 2049/16 formulates the question of whether there is a discretion to overrule a decision to admit late filed evidence (Reasons 3.2), it then points out that G 7/93 concerns the overruling of a decision not to admit documents, and that the EBA did not intend to make a general statement to be applied to other situations. Indeed, this decision also contradicts the respondent's position when it concludes that overruling the admission of documents would be inconsistent with the principle of examination by the EPO of its own motion under Article 114(1) EPC. Moreover, as also pointed out in Reasons 3.2 of T 2049/16, if a document is admitted on the basis that it is considered to be prima facie relevant but it turns out that it is in fact not relevant, admitting the document would be unlikely to negatively affect proprietor's position.

2.4 The Board also notes that the fact that some decisions discussed the admittance of evidence that had already been admitted in first instance proceedings does not per se imply that there is a legal basis for overruling the admittance of late filed evidence. The argument made in these decisions is that "even if there was a discretion ... the Board would still not overturn the decision to admit the evidence", which simply implies that said boards found it easier and/or more appropriate to confirm that the first instance had exercised its discretion correctly, than to address the question of whether the Board has a legal basis for overturning the exercise of discretion.

2.5 In view of the above considerations, the present board concludes that there is no basis for overruling a decision to admit late filed evidence by the first instance (cf. Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.4).

2.6 Moreover, since there seems to be no divergence in the position of the different boards in this respect, the present board does not see any reason to refer a question to the Enlarged Board.

2.7 It follows that documents D30, D30a (i.e. the public prior use P4) and D32 are part of these proceedings.