Tuesday, 3 August 2010

T 339/08 – Thus Speaketh The White Book

This decision has retained my attention because the “White Book” (which is not white any more) is cited as if it was “the Good Book.”

The proprietor requested some late-filed documents not to be admitted to the procedure. The relevance of the late-filed documents was only a minor consideration to be made in deciding whether to admit them to the procedure. More important was that the case examined at appeal should have the same legal framework as that before the first instance, reference being made to the summary of case law provided in the “White Book”, i.e. “Case Law of the Boards of Appeal”, 5th Edition page 393, section 3.1.2 regarding exercise of discretion in admitting late filed material to the appeal procedure. In the present appeal, however an entirely new case had been constructed. Further, according to decision T 49/85, T 101/87 and page 399 of the “White Book” documents submitted for the first time with the statement grounds of appeal were not to be considered as having been filed in due time unless they provided counter evidence for a newly emphasised reason given in the decision under appeal, which condition did not apply in the present case. 

The Board remains unpersuaded but accepts to do some White Book exegesis as well:

[2.8] Regarding the submissions of the patent proprietor at the oral proceedings that maintaining the “legal framework” had a higher priority than considerations of relevance in deciding whether to admit late filed documents […], the Board observes that the cited section 3.1.2 of the “White Book” is entitled “Examination as to relevance with respect to G 9/91 and G 10/91” (emphasis of the Board). The phrase “legal and factual framework” occurs in this section in the discussion of decision T 212/91 which decision in section 2 of its reasons in coming to the conclusion not to admit the late-filed evidence gives high or even highest precedence to the aspect of relevance (“possibly, most significantly…”). Thus neither the cited passage of the “White Book” taken alone nor the case law to which it refers supports the contention of the patent proprietor that maintaining the “legal and factual framework” takes precedence over relevance in deciding on the admissibility of newly filed evidence.

As regards the further submissions referring to T 49/85T 101/87 and page 399 of the “White Book” where these decision are discussed, the Board observes the following.

In the decision under appeal an attack based on D1 was rejected due to the fact that D1 required a water sensitive polymer and a hydrophobic polymer rather than two water sensitive polymers […]. In reaching this conclusion, the opposition division dismissed the arguments of the opponent that the systems of D1 contained only polymers which could be designated “water sensitive”, in particular with a view to obtaining products with good blocking resistance […]. 

T 49/85 [2] states that a document filed for the first time with the statement of grounds of appeal is not submitted in due time (A 114(2)) unless representing effective counter evidence to a newly emphasized reason given in the decision. It is however within the discretion of a Board of appeal pursuant to A 114(1)  to admit such a document into the proceedings in view of its relevance (emphasis of this Board). 

T 101/87 concerned a case where upon appeal four new documents were cited and as a consequence new evidence and arguments presented which “bore little relation to those filed in the original opposition” and produced in effect an entirely new opposition at the appeal stage. This which was considered to constitute an abuse of the appeal procedure. This was contrasted with the case that new documents were filed in order to address deficiencies in the argument, e.g. to close a “missing link” in a chain of argument which was considered to be admissible (T 101/87 [2]).

The Board is satisfied that the opponent in formulating its appeal and citing new documents acted in accordance with the findings of this case law in that the newly cited documents were directed to overcoming deficiencies in the evidence thus far submitted, identified in the decision under appeal. The conclusion is that the case law referred to by the patent proprietor does not support its position that the newly filed documents should not be admitted to the procedure.

Personally I think that the White Book is just a handy summary of case law and should not be treated as if it was more than that. When it comes to legal arguments, the precise wording of the White Book and its titles appear to be irrelevant; exegesis should be limited to legal provisions and perhaps the decisions themselves, as the case may be. The only possible exception that comes to my mind is that a good faith argument could perhaps be based on the wording of the White Book.

If you wish to read the whole decision, you may download it here.