T 1870/21 - Admitting a document is a substantial procedural violation (?)

Key points

• Can admitting a document be a substantial procedural violation?
• Note that current case law appears to be that the  Board can not review a decision to admit a submission.
• "According to the appealed decision (see §6.2), [D50, filed by the proprietor] [was] not relevant for the reasons of the decision, so that the appellant's [opponent's] request not to admit them was not discussed. This is however contradicted by the fact that the inventive step reasoning set out later in the decision relies on "E40", which corresponds in fact to D50 in the respondent's original numbering (see §8.4.3.1)."
• " The relevant question is thus whether the opposition division committed a substantial procedural violation justifying a reimbursement of the appeal fee under Rule 103(1)(a) EPC."
• "it remains that the opposition division took D50 into account in the appealed decision without first hearing the parties on the appellant's request not to admit D50. By deciding to reject the opposition without hearing the appellant on a request relevant to that decision, the opposition division infringed Article 113(1) EPC and committed a procedural violation. Considering that, during the oral proceedings before the opposition division, neither the admittance nor the content of D50 were discussed, and no decision as to its admittance was announced, it could not be expected from the appellant that they would present their arguments at the oral proceedings with regard to D50."
• Note, the problematic issue seems to be not so much the decision to admit D50, but the fact that the opponent had no fair or real opportunity to comment on D50 during the oral proceedings.
  
  
• "According to the respondent [proprietor], D50 is not the underlying reason for the opposition division's finding of non-obviousness, which was rather motivated by the case law (T385/07 and T715/03) acknowledging inventive step over prior art referencing ongoing clinical phase I and II trials. The opposition division's conclusion at the end of section 8.4.2 would already address the question of 8.4.3 regarding whether there was a reasonable expectation of success in view of the promising results, such that the same conclusion would have been reached even without section 8.4.3.1."
• The Board: "The section relying on D50 (i.e. §8.4.3.1) is the only passage of the decision explaining why, in the opposition division's view, and contrary to the appellant's position, there was no reasonable expectation of success despite these promising results disclosed in the prior art D2/D3."
• The Board does not go into the content of D50.
• "In section §8.4.4, the opposition division differentiates the case at hand from decisions T 2506/12, T 725/11 and T 239/16, and concludes that the knowledge that clinical trials were ongoing would not have given the skilled person a reasonable expectation of success. This passage does not address either the issue of expectations in view of the promising experimental in vitro and in vivo results reported in D2/D3, which the appellant had raised in the first instance proceedings (see the third paragraph on page 4 of the minutes)."
• "Accordingly, it cannot be concluded that the argumentation based on D50 is to be seen as a merely supererogatory and incidental argument in the appeal decision. The Board therefore concludes that the appealed decision is tainted by a substantial procedural violation."

• The Board remits the case (and reimburses the appeal fee).

• I assume that the opponent can now comment on D50 in the procedure before the OD? (and that the OD has to decide formally on the admissibility of D50?) I also assume that the opponent made the relevant arguments already in the appeal (otherwise, there would be an issue of harmless error).

EPO 

You can find the link to the decision after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211870eu1