T 704/08 – Potential Matters

In this case the Opposition Division (OD) had maintained the patent in amended form. The Board of appeal (decision T 1505/06) then remitted the case to the OD because it could not exclude that a substantial procedural violation had occurred. The OD finally revoked the patent on the basis of late filed documents D11 to D14. The patent proprietor filed an appeal and pointed out that another substantial procedural violation had occurred:

[1.2.1] The [patent proprietor] considered that the decision of the OD did not give any reasoning why D11 to D14 were more relevant than those already in the proceedings.

The [patent proprietor] is correct in so far as the OD in its decision merely stated with respect to their admittance that they were prima facie relevant to the question of novelty and/or inventive step […]. However, the OD came to the conclusion that the subject-matter of independent claims 1 and 7 of the main request lacked novelty over D14 […]; that the subject-matter of independent claim 1 of the second auxiliary request lacked an inventive step over the combination of D12 and D14 […]; and that the subject-matter of independent claim 7 of the second auxiliary request lacked novelty over D13 […]. The reasons why the OD admitted D12 to D14 into the proceedings are thus absolutely clear from this further reasoning in the decision.

The Board would furthermore note that a document does not have to be more relevant than documents already in the proceedings in order for it to be admitted into the proceedings. It is sufficient that it could influence the outcome of the proceedings, for example in combination with a document already in the proceedings.

With regard to D11 the decision neither explicitly nor implicitly explained its relevance. It may be noted, however, that a document may be admitted into proceedings if it could affect the decision at the time of its admittance. The fact that it turned out that the document did not affect the decision does not mean that the OD committed a procedural violation in not providing supporting reasons for its admittance since there could arise other reasons, as in the present case, for revoking the patent.

[1.2.2] The Board concludes that no procedural violation was committed in this respect, let alone a substantial one.

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