In this case the Board inter alia discussed the admissibility of documents filed together with the statements of ground of appeal.
*** Translation of the German original ***
[3.1] The main purpose of inter partes appeal proceedings is to offer the losing party the opportunity to contest the decision of the Opposition Division (OD) that adversely affects it and to have the correctness of this decision reviewed in proceedings that are completely separate from and independent of the first instance proceedings (see e.g. T 34/90, G 9/91 and G 10/91 ). As the nature of appeal proceedings is that of proceedings before an administrative court (G 7/91 and G 8/91) the decision of the Board of appeal shall in principle be based on the disputed matter (Streitstoff) of the first instance. As far as new submissions of a party in appeal proceedings are concerned, this principle means that the admission of such submissions is not ruled out but depends on the fulfilment of certain requirements (see e.g. T 356/08 [2.1.1]; T 1685/07 [6.4]; Brigitte Günzel “The treatment of late submissions in proceedings before the boards of appeal of the EPO”, OJ EPO, Special edition 2/2007, 30). An opponent whose opposition has not been successful in the first instance may file new prior art documents during the appeal proceedings, but it has no entitlement to these submissions being admitted into the appeal proceedings. Rather, the admission of new submissions depends on whether certain requirements have been fulfilled and is within the discretion of the Board.
[3.2] These principles are expressed in Articles 12(4) and 13 RPBA. As the [opponent] has filed documents D10/10a and D11/11a together with its statement of grounds of appeal, Article 12(4) is the relevant provision in the present case.
[3.3] Pursuant to Article 12(4) RPBA, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Accordingly, in application of Article 12(4) RPBA, the Board is entitled, in the present case, not to admit into the proceedings documents D10/10a and D11/11a, which the [opponent] has cited for the first time in the statement of grounds of appeal, if this evidence could have been filed in the course of the first instance proceedings.
[3.4] In its statement of grounds of appeal the [opponent] has for the first time based its objection of lack of inventive step of the claims of the patent as maintained by the OD inter alia on documents D10/10a and D11/11a. The claims of the patent as maintained correspond to the second auxiliary request filed during the OPs before the OD. The amendment with respect to the impugned patent as granted consists in the combination of claims 1 and 3 as granted to claim 1 as amended and the corresponding renumbering of the claims as granted. Thus the Board is of the opinion that the patent as maintained in amended form by the OD does not contain any amendments that raise new aspects with respect to the impugned patent as granted. It is, therefore, not clear to the Board to which extent the submission of documents D10/10a and D11/11a could be a reaction of the [opponent] to this second auxiliary request. Rather, the [opponent] has made the objection of lack of novelty already when filing its opposition, and, therefore, these documents could have been filed in the course of the first instance proceedings or even – as argued by the [patent proprietor] – within the time limit for filing an opposition.
It is not relevant in this context whether the [opponent] has indeed received these Japanese patents and the corresponding “Patent Abstracts of Japan”, respectively, at a later time or whether these documents were indeed hard to find, because this cannot [change the situation] to the detriment of procedural economy and the principle of fairness with respect to the other party. Just as a patent proprietor is required to file amended claims during the first instance opposition proceedings, an opponent has to submit objections to claims as granted during the first instance. If it does submit such objections only when filing the statement of grounds of appeal, as in the present case, then it takes the risk of the Board making use of its discretion pursuant to Article 12(4) RPBA not to admit these submissions into the appeal proceedings.
When exercising this discretion, the Board can make the admission of a submission of a prior art document into the appeal proceedings dependent on whether this prior art document is prima facie relevant. However, the Board does not have to do so; otherwise an opponent could always file a (highly) relevant prior art document together with the statement of grounds of appeal without further ado and rely on its admission into the appeal proceedings, because of its relevance.
In the present case the Board left aside the question of the relevance of documents D10/10a and D11/11a, which had been discussed by the parties, because, for reasons of procedural economy and also [of fairness] with respect to [the patent proprietor], it did not consider it to be justified to admit these documents - which have been found accidentally and which had not been specifically (gezielt) searched at an earlier stage of the proceedings - into the appeal proceedings, regardless of their relevance.
[3.5] For the above reasons documents D10/10a and D11/11a have not been admitted into the proceedings, in application of Article 12(4) RPBA.
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