T 2036/22 - Please ignore that 'final' date for written submissions

Key points

• The OD revokes the patent. The proprietor appeals
•  "The appellant stated that the filing of A043 [an experimental report] represented a reaction to D41 [a report filed by the opponent]. However, even if this argument was accepted, it would not be convincing. D41 was filed on 25 April 2022, i.e. more than two months in advance of the oral proceedings before the opposition division. 
• "D41 is an experimental report filed by opponent 1 by letter dated [Monday] 25 April 2022, i.e. in advance of the final date (28 April 2022) for making written submissions before the oral proceedings set by the opposition division under Rule 116 EPC."
• The Board: "There is no reason apparent to the board to explain why a period of two months was not sufficient for submission of A043. In fact, as set out above, A043 does not contain new experimental data but merely specifies the experimental conditions under which the examples of the patent and the appellant's examples filed with the reply to the notice of opposition had been carried out. These experimental conditions must have been well-known to the appellant, meaning that A043 should have been filed before the opposition division, at the latest in the oral proceedings."
• Note, the Board does not say that the proprietor had an obligation to file A043 before the filing of A041 

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/t222036eu1

3. Document A043

3.1 Document A043 is an experimental report first filed by the appellant with the statement of grounds of appeal in the context of inventive step. The respondents requested that A043 not be admitted.

3.2 According to the appellant, A043 merely summarised the results of the abrasion test and the baking test reported in example 1 of the patent as well as in examples A and B filed with its reply to the notices of opposition, and further specified the experimental conditions used in these examples. Hence, its admittance could not be contested. Moreover, having regard to the criteria to be used for assessing admittance as defined in Article 12(4) RPBA, the appellant submitted that the content of A043 was not complex since it merely described the experimental conditions used in the examples. Additionally, it was a suitable document for addressing the issues that led to the appealed decision, since it allowed the conclusion to be reached that D41 was not suited to disproving the technical effect of the claimed subject-matter. Procedural economy was not affected either, because A043 did not give rise to any new issue.

3.3 The appellant conceded that an objection alleging that the patent did not describe the experimental conditions used in the reported examples had been raised by respondent-opponent 3 in its notice of opposition. However, the appellant argued that this objection had been formulated very generally in the context of inventive step and was merely one of several other objections contained in the notice of opposition. An objection of lack of inventive step should have been corroborated by experimental data. In the absence of such data, there was no need for the appellant to file A043. The appellant replied to this objection by means of arguments, which were accepted by the opposition division, which then issued a preliminary opinion in favour of inventive step. It was only when experimental data were filed with D41 that A043 became necessary, and the appellant filed the latter at the first opportunity, i.e. with the statement of grounds of appeal. It had not been possible for it to file A043 in advance of the oral proceedings before the opposition division because the information contained in A043 was not available in the period between the filing of D41 and the date of the oral proceedings. The appellant referred to decision T 291/21, in which a similar situation arose and evidence from the patentee filed with the statement of grounds of appeal was admitted. The appellant concluded that, since A043 represented a timely response to D41, it should have been admitted.

3.4 The board decided not to admit A043 for the following reasons.

3.4.1 A043 introduces several details as regards the operating conditions, under which the abrasion test and the baking test mentioned in paragraphs [0050] and [0051] of the patent were carried out on the compositions of example 1 of the patent (table 4 in paragraph [0055]) and of examples A and B (reply to the notices of opposition, page 8). These details represent new facts relied upon in appeal proceedings for the first time. A043 thus constitutes an amendment of the appellant's appeal case within the meaning of Article 12(4) RPBA.

3.4.2 Under Article 12(4) RPBA, any amendment to a party's appeal case is subject to the party's justification for submitting the amendment in the appeal proceedings. Any amendment is admitted only at the board's discretion, exercised in view of, inter alia, the complexity of the amendment and the need for procedural economy. Contrary to the appellant's view, the admittance of A043 would have given rise to several complex issues to be discussed in the appeal proceedings for the first time. As submitted by the respondents, it would have had to be considered, for example, whether the mentioned details of the abrasion test and baking test were sufficient to fully describe the conditions of these tests, whether the adopted experimental conditions were suitable for use in proving the purported technical effect (improvement of the lubricating performance) and whether the difference between the experimental conditions mentioned in A043 and those used in D41 was sufficient to enable the results shown in D41 to be disproved. Therefore, the admittance of A043 would also have been detrimental to procedural economy.

3.4.3 Moreover, under Article 12(6) RPBA, the board is not to admit, inter alia, facts and evidence which should have been submitted before the opposition division. As pointed out by respondent-opponent 3 and not contested by the appellant, an objection to missing experimental details as regards the conditions of the abrasion test and the baking test mentioned in the patent (paragraphs [0050] and [0051]) had been raised by respondent-opponent 3 in its notice of opposition - see page 7, lines 26 to 33. Even though the opposition division issued a preliminary opinion in favour of inventive step, the parties should be responsive to each other and not only to the EPO. Hence, the appellant should have filed A043 in response to respondent-opponent 3's objection.

3.4.4 The appellant stated that the filing of A043 represented a reaction to D41. However, even if this argument was accepted, it would not be convincing. D41 was filed on 25 April 2022, i.e. more than two months in advance of the oral proceedings before the opposition division. There is no reason apparent to the board to explain why a period of two months was not sufficient for submission of A043. In fact, as set out above, A043 does not contain new experimental data but merely specifies the experimental conditions under which the examples of the patent and the appellant's examples filed with the reply to the notice of opposition had been carried out. These experimental conditions must have been well-known to the appellant, meaning that A043 should have been filed before the opposition division, at the latest in the oral proceedings.

3.4.5 Decision T 291/21 cited by the appellant cannot support its case either. In fact, the competent board noted (see, under point 3.1 of the reasons, the paragraph referring to point 7.1 of the communication issued under Article 15(1) RPBA) that new experimental data had been filed by the patent proprietor with its reply to the grounds of appeal. These data were regarded as a reaction to new objections raised by the opponent two months prior to oral proceedings before the opposition division. The competent board considered a period of two months to be too short for the patent proprietor to prepare and file new experimental data. The data filed with the reply to the grounds of appeal were thus admitted.

The rationale used in T 291/20 is not applicable to the case at hand, where, as explained above, the objection to missing experimental details of abrasion and baking tests had been raised by respondent-opponent 3 already in its notice of opposition. Moreover, A043 did not contain new experimental data but merely specified the experimental conditions under which the examples of the patent and the appellant's examples filed with the reply to the notice of opposition had been carried out.

3.5 Based on the considerations set out above, A043 was not admitted, pursuant to Article 12(4) and (6) RPBA.