Monday, 22 March 2010

T 759/08 – Known Things Can’t Surprise

[…] Documents D4 to D10 cited against the patent have been filed after expiration of the time limit for filing an opposition.

According to A 114(2), the EPO may disregard such evidence. It is in its discretion to introduce late filed documents cited against the patent into the opposition or appeal proceedings or to refuse them. However, according to the established case law, such documents are to be taken into account if they are prima facie relevant because they are very likely to be prejudicial to maintaining the European patent. Moreover, it is in the discretion of a Board of appeal to introduce relevant documents into the proceedings of its own motion. However, this does not establish the entitlement [to introduce] documents that have been cited against the patent during the examination proceedings or which have been filed belatedly during the opposition or opposition appeal proceedings. [2.1]

In the present case the parties have discussed arguments concerning the common knowledge of the relevant skilled person. In order to provide evidence for this commonly known technical knowledge the manuals D4 and D5 have been filed during the opposition proceedings and manual D10 was referred to in the appeal proceedings.

According to the definition of the Boards of appeal the content of encyclopaedias, manuals and dictionaries normally represents the common general knowledge (see Case Law of the BA of the EPO, 5th edition 2006, I.C.1.5, page [48]). Manuals D4, D5 and D10 were cited as evidence for generally known effects of alloy elements in Al-alloys on their properties (D4), the composition of known standard Al-alloys (D10) or their application and product forms according to DIN EN 573-4 (D5). Therefore they represent the general knowledge of the person skilled in the art of Al-alloys. As a rule, the general knowledge cannot be considered as a complicated or surprising fact because it is sufficiently known to the skilled person. The introduction of the cited documents cannot be considered to be abusive, even it they have been filed after the expiration of the time limit for filing an opposition, i.e. belatedly, because they only confirm a fact that is commonly known to the skilled person.

Therefore, documents D4, D5 and D10 are taken into account. [2.2] 

I find this decision useful because it clearly states that the late introduction of evidence for common general knowledge should in principle always be possible.

Another minor remark: The Boards tend to refuse late filing of documents and/or amendments when the late filing would come as a surprise to the other parties and/or the Board itself. In the present decision there is an almost imperceptible shift towards the skilled person: the argument appears to be that the skilled person could not be surprised by the documents because they reflect the common knowledge of the skilled person. This may be true but it should not be forgotten that the skilled person is a legal fiction: it is as difficult to surprise the skilled person as it is to shake its hand. Neither the parties nor the members of the Board qualify as skilled persons within the meaning of the provisions of the EPC. Therefore, the introduction of a document could come as a surprise to them even though the skilled person would not be surprised.

To read the whole decision (in German), click here.