T 1639/23 - Made admissible by subsequent developments

Key points

• "The opposition division did not admit D7 and D7' (among other documents) [filed by the opponent] and the corresponding objections based on them into the opposition proceedings since they were considered late filed and, prima facie, not relevant."
• "Documents D7 and D7' were submitted by the appellant also on the final date referred to in Rule 116(1) EPC. Objections and evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC and claim requests submitted by a patent proprietor after the end of the period under Rule 79(1) EPC can generally be considered to not have been submitted in due time within the meaning of Article 114(2) EPC (see T 2172/21, Reasons 2, first paragraph; T 823/23, Reasons 7.18; and T 2662/22, Reasons 8.1, antepenultimate paragraph). Hence, the opposition division had discretion not to admit the aforementioned amended claim request or the aforementioned documents."
• " In the case at hand, documents D7 and D7' were submitted by the [opponent] at the same time as the [patent proprietor] submitted two amended claim requests [with features taken from the description]. These amended claim requests replaced all previously filed claim requests. During the oral proceedings before the opposition division, the patent proprietor filed, in two consecutive steps, two further amended claim requests as new main requests. The opposition division admitted all these amended claim requests into the opposition proceedings. When the fourth amended claim request was admitted by the opposition division, the appellant-opponent raised an objection against it based on documents D7 and D7', which the opponent had already filed on the final date referred to in Rule 116(1) EPC. The opposition division did not admit this objection for lack of prima facie relevance. While prima facie relevance is a correct criterion for the exercise of discretion, an opposition division must in such a situation also take account of previous procedural developments and ensure that the parties' opportunities to adapt their cases in the opposition proceedings are properly balanced. It appears questionable whether this was the case."
• The Board does not mention the opponent's right to be heard. 
• A question is whether D7 was admissible at the time of its filing (when the new auxiliary requests were not yet submitted) and if it could become admissible later.
• The Board does not have to make a decision on the point: "regardless of whether the opposition division's exercise of discretion suffered from an error, the Board considers that the circumstances of the appeal case justify the admittance of document D7. In particular, the Board considers document D7 prima facie highly relevant with regard to novelty"
• Claim 1 is found to be not novel over D7.
• The novelty-destroying effect of D7 would have applied equally to the claims as granted, it seems to me.
• The patent is revoked.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t231639eu1