Wednesday, 23 December 2009

T 1160/07 – Wrongful Exercise Of Discretion

The Opposition Division (OD) has exercised its discretion to not admit the pieces of evidence D8 - D11 considering as criteria whether the late filing amounts to an abuse of procedure and whether these documents are of prima facie relevance. [2.4]

The Board agrees with the respondent that if the way in which the department of first instance has exercised its discretion is challenged in an appeal, it is not the function of the Board of Appeal to put itself in the place of that department and consider how it would have exercised its discretion itself. A Board should only overrule the way in which the discretion was exercised if it concludes that it was done according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. [2.5]

In exercising its discretion to not admit documents filed after expiry of the period for opposition an OD has to take into account the relevant facts and circumstances of the case. The question of abuse of proceedings has been addressed correctly by the OD. Others circumstances and facts which should be considered are e.g. whether the documents in question are relied upon in direct response to the communication annexed to the summons for oral proceedings and whether they are prima facie relevant. [2.6]

Concerning the first aspect mentioned above the impugned decision is, however, silent. In the minutes of the oral proceedings (OPs) before the OD it is indicated “regarding the matter of the late filing of documents D8 to D11, the opponent explained essentially that this was in reaction to the provisional opinion set out by the opposition division in its annex to the invitation to the OPs”. Since concerning this circumstantial aspect the impugned decision is totally silent and the minutes only repeat the argument of the [opponent], i.e. no conclusion on this issue is given by the OD, the Board can only conclude that this aspect was not considered in the end.

It is not appropriate to express on the one hand a preliminary opinion in the annex to the summons sent by virtue of R 71a EPC 1973, as required by the Guidelines for Examination (E-III, 6), setting a time limit for filing any submissions expiring 19 March 2007 and on the other and not to admit such submissions and their supporting evidence filed 14 March 2007, i.e. before the set date, without reflecting on the question whether they were a reaction to the OD’s opinion (see in this respect also T 281/00 [2.4]). [2.6.1]

Concerning the second aspect, namely the prima facie relevance, the Board notes that according to the impugned decision the chisel handle according to D10 has a circular symmetry around its central axis, resulting in the conclusion that D10 cannot be considered as an appropriate starting point with respect to a method relating to the production of a shaving razor handle. In this respect the Board is of the opinion that by relying on this aspect of the known chisel handle emphasis has been placed on a feature which, however, lacks any correspondence with the subject-matters of claims 1 of all requests then on file, which neither comprise a corresponding feature defining any cross-sectional shape of the shaving razor handle nor do they imply lack of symmetry of this handle.

Consequently the OD has examined the prima facie relevance of document D10 in a manifestly wrong manner, by considering facts which are irrelevant in this connection. [2.6.2]

Thus, for the reasons given above, the OD has exercised its discretion with respect to the non-admittance of document D10 without taking into account the right principles (point 2.6.1) as well as according to wrong principles (point 2.6.2). For the above reasons D10 is to be considered as forming part of the opposition - and thus appeal - proceedings. [2.7] 

To read the whole decision, click here.