T 0856/22 - Opponent must request postponement oral proceedings (?)

Key points

• The OD admitted D18, a document with experimental results filed by the proprietor in the procedure before the OD. The opponent appeals.
• " Document D18 was filed by the [proprietor] before the final date for making written submissions set by the opposition division under Rule 116 EPC. The opposition division therefore had discretion to admit and consider document D18, in particular if it was considered prima facie relevant, as is evident from point 14.1 of the decision under appeal. The opposition division thus applied the correct criterion of prima facie relevance (see also Case Law of the Boards of Appeal, 10th edition 2022 (Case Law), IV.C.4.5.3a)), [...] ."
• " Furthermore, the [opponent] did not request that the oral proceedings before the opposition division be postponed [i.e. adjourned] when document D18 was admitted, and no violation of the appellant's right to be heard - resulting from the admission of document D18 - is apparent. The opposition division therefore correctly admitted document D18 into the opposition proceedings."
• The opponent/appellant filed an experimental report D21 with the statement of grounds.
• The Board: "Furthermore, the appellant did not submit that the filing of document D21 was triggered by the admittance of document D18 during oral proceedings before the opposition division. In any case, had the appellant intended - in the opposition proceedings - to react to the admittance of that document by filing the experimental data now filed as document D21, it would have been their duty to request a postponement of the oral proceedings - either before or even during the oral proceedings - following the opposition division's decision to admit it. However, none of these measures was taken."
• Note, the 'in any case' observation is obiter.
• As a comment, in the case at hand, the appeal of the opponent is dismissed, but suppose the Board revoked the patent (i.e. found the patent to be invalid), any postponement of the oral proceedings before the OD would have added a few months to the lifetime of the patent. It can be seen that usually, the opponent has a legitimate interest in a swift decision of the OD in order to have an invalid patent finally revoked without undue delay. Assuming a procedural obligation of a party to request a postponement of the oral proceedings in opposition cases is, therefore, not without problems.

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220856eu1

Consideration of document D18 in the appeal proceedings

1. The appellant submitted essentially that the opposition division had exercised its discretion to consider document D18 in the opposition proceedings according to the wrong principles, had committed a procedural violation by stating that document D18 could not have been filed earlier and had not provided reasons why (the data of) document D18 should be admitted into the proceedings.

2. It is established case law of the Boards of Appeal that, on appeal against a decision taken by an opposition division in exercise of its discretion, it is not for the board to review all the facts and circumstances of the case as if it were in that division's place and decide whether or not it would have exercised discretion in the same way. A board may overrule the way in which the opposition division exercised its discretion only if it concludes that it did so according to the wrong principles, without taking the right principles into account or in an arbitrary or unreasonable way, thereby exceeding the proper limits of its discretion (on this point, see, in particular, G 7/93, Reasons 2.6).

3. Document D18 was filed by the respondent before the final date for making written submissions set by the opposition division under Rule 116 EPC. The opposition division therefore had discretion to admit and consider document D18, in particular if it was considered prima facie relevant, as is evident from point 14.1 of the decision under appeal. The opposition division thus applied the correct criterion of prima facie relevance (see also Case Law of the Boards of Appeal, 10th edition 2022 (Case Law), IV.C.4.5.3a)), even if its additional comment that document D18 could not have been filed earlier might be incorrect. Furthermore, the appellant did not request that the oral proceedings before the opposition division be postponed when document D18 was admitted, and no violation of the appellant's right to be heard - resulting from the admission of document D18 - is apparent. The opposition division therefore correctly admitted document D18 into the opposition proceedings.

4. The EPC does not provide a legal basis for retroactive exclusion of - in appeal proceedings - documents, requests or evidence already correctly admitted into the opposition proceedings, all the more so if the impugned decision is based on them, as is the case for document D18 (see, e.g., decisions T 1852/11, Reasons 1.3, and T 1525/17, Reasons 4.3; Case Law, V.A.3.4.4). In view of the very aim of appeal proceedings to review the decision under appeal, such submissions are automatically part of the appeal proceedings (see Article 12(2) RPBA).

5. Document D18 is therefore part of the appeal proceedings.