T 0006/23 - A remedy for an incorrectly admitted document

Key points

• "During the oral proceedings, the opposition division admitted D30. The opposition division concluded on the basis of D30 that a technical effect could not be acknowledged over the whole scope claimed. In view of this conclusion, the opposition division denied inventive step and revoked the patent."
• The proprietor appeals.
• The case law is clear, it seems, that the Board can not "unadmit" D30.
• The proprietor had requested a postponement of the oral proceedings before the OD.
• " In its decision concerning the admittance of D30 (decision under appeal, page 6, point 4), the opposition division did not give any reason why it was not granting the appellant [proprietor] more time by postponing the oral proceedings. The opposition division's decision is thus not reasoned, contrary to Rule 111(2) EPC. For this reason alone, the appellant's right to be heard has been violated (Article 113(1) EPC)."
• "The board agrees with the appellant's view that it did not have sufficient time to properly respond to D30 before or at the oral proceedings. Since the opposition division admitted D30, it should have granted a postponement of the oral proceedings to preserve the appellant's right to be heard."
• "Moreover, the appellant had promptly reacted to the opponents' objection, raised in their notices of opposition, that no technical effect could be attributed to the claimed subject-matter, namely by filing experimental data with the reply to the notices of opposition. By contrast, as noted by the appellant, opponent 1 had waited almost one year from that reply and nine months from the opposition division's preliminary opinion to file experimental report D30, which was not filed until the final date for making written submissions under Rule 116(1) EPC."
• "By not postponing the oral proceedings and not considering the appellant's argument that it did not have sufficient time to properly respond to D30, the opposition division violated the appellant's right to be heard (Article 113(1) EPC). Moreover, the opposition division violated the principle of fairness towards the parties by allowing opponent 1 to take almost one year to file its evidence while forcing the appellant - by rejecting its request for postponement of the oral proceedings - to file a response (such as A33 and A35 and related arguments) including experimental counter-evidence (such as A34) within two months."
• "The opposition division has thus committed a procedural violation."
• "this procedural violation is substantial since the lack of inventive step is the sole ground on which the opposition division revoked the patent, basing its finding precisely on the experimental report "
• The decision is set aside and the case is remitted.
• The appeal fee is reimbursed.
• The current appeal took two years, during which the patent is in force. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230006eu1