Wednesday, 24 March 2010

T 458/07 – Late Filing By Third Parties

The present decision also deals with a rather rare situation: the filing of a document by a third party during the appeal proceedings.

On admission

On 25 February 2008, i.e. during the appeal proceedings a third party filed a submission pursuant to A 115. It contained inter alia document […] D27, disclosing in Example 6 a process for the purification of erythropoietin with anion exchange chromatography. Moreover, the submission contained a table setting out the compositions of the buffers used in the process according to Example 6 as well as conductivity values determined for these buffers. [59]

Document D27 is a late-filed document. Hence, its admissibility is at the discretion of the board pursuant to A 114(2) (see also T 390/07 [headnote]). [60]

[...] The observations under A 115 were filed more than 1 1/2 years before the oral proceedings so that the parties and the board had sufficient time to consider the document. In fact, appellant I has reacted already in the written proceedings to the submission of the third party by filing amended claims and a declaration, i.e. the declaration by Dr Dowd, document D29. Also the board has studied the submissions in order to get a view of their relevance, in particular of document D27 and has notified the parties that it considers document D27 to be relevant.

None of the parties has requested that the submission of the third party, in particular document D27, be disregarded.

Thus, the board decides to admit the submission of the third party into the proceedings. [61]

On remittal

A 111(1) gives the boards of appeal the discretion either to “exercise any power within the competence of the department which was responsible for the decision appealed” or to “remit the case to that department for further prosecution”. It follows from this provision that a board is not obliged to remit a case for consideration to the first instance only because new material has been submitted which has not been considered during the first instance proceedings. [62]

This is also not derivable from the Enlarged Board of Appeal’s decision G 9/91. It is stated in point 18 of the reasons: “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits.” It is true that in the following passage the judicial and therefore less investigative nature of the appeal proceedings is highlighted in the decision G 9/91, however only to remark a contrast with the opposition proceedings which are of an administrative and therefore more investigative nature. [63]

When exercising the discretion given by A 111(1) the boards balance the public interest in procedural economy with the entitlement of the parties to fair proceedings. For the reasons given above in point 61, the board considers it appropriate to deal with document D27 itself, thus avoiding the delay in reaching a final decision which would be entailed if the case was remitted. [64]

Thus, [the patent proprietor’s] request for remittal to the first instance for consideration of document D27 is refused.

The treatment of the observation by the Board may be contrasted with the findings of T 156/84 [3.7] where it was said that A 114(2) evidently did not apply to observations by third parties under A 115(1) and that there was no provision imposing any limit on the period within which such observations have to be presented or empowering the EPO to disregard facts coming to its notice in this way, whenever they are presented. T 458/07 rather follows T 390/07: the document filed under A 115 is treated in the same way as any other late filed document. 

One might say that this is not unreasonable, because otherwise A 115 would provide the possibility of circumventing the strict rules that govern the treatment of documents filed belatedly by the parties, by asking a straw man to file the document. 

However, a party might still be tempted to use a straw man if otherwise the late filing as such might be considered abusive.

To read the whole decision, click here.


Anonymous said...

Although A 13 RPBA relates to amendments to a party's case and is therefore not directly applicable to third parties under A 115 EPC, the criteria expressed in A 13(3) RPBA seems a useful guide. It states that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise isues which the board or the other parties cannot reasonably be expected to deal with without adjournment of the oral proceedings. This suggests that the setting of a date for oral proceedings is a point in the proceedings before the boards after which the aspect of procedural economy takes precedence even over relevance. Conversely, before this point other aspects may be considered as more relevant.