Can an opponent rely on documents that had been filed as third party observations during the examination proceedings? Is there any objection to citing them for the first time in response to summons for oral proceedings (OPs) before the Board? In other words, are such documents “on file” and instantly available to the opponent without further ado? Nope, says the Board.
NB: All articles and rules refer to the EPC 1973.
[10] Documents E11, E12 and E13 are copies of submissions made by third parties during the examination of the application on which the present patent was granted. The submissions were treated by the examining division as observations under A 115. As evidence in support of grounds for opposition under A 100(a) and (b), these documents were filed one month before the OPs before the board. At the OPs, the [opponent] maintained that the documents in question were part of the file and that, in its view, the board had no discretion whether or not to admit them as evidence into the proceedings, but was bound to consider them.
[11] The board does not share this view. First, as far as documents E11, E12 and E13 have been submitted as evidence in support of fresh grounds for opposition raised for the first time on appeal, in particular lack of novelty, it is, in fact, correct that the board has no discretion when deciding whether the documents are considered or disregarded. Since according to decision G 10/91 the board cannot consider the fresh grounds of opposition put forward by the [opponent] for the first time in appeal proceedings - as the patent proprietor opposed to their introduction into the proceedings -, it cannot consider evidence submitted in their support either.
[12] Second, in the board’s view, as far as documents E11, E12 and E13 have been submitted as evidence in support of grounds for opposition put forward in the statement under R 55(c) (i.e. grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56), they were not filed in due time and, consequently, the board is empowered to exercise the discretion conferred by A 114(2) to disregard them.
[13] The question whether or not evidence has been filed in due time has to be decided taking into account the circumstances of the particular case. In the present case, the grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56 were put forward within the opposition period provided for in A 99(1). Thus, in principle, any evidence in support of these grounds had to be submitted within the opposition period, unless there were valid reasons not to do so.
[14] In the statement under R 55(c), only the observations under A 115 filed as document E13 in appeal proceedings were mentioned as evidence in support of the ground for opposition under A 100(b), in particular in connection with the objection that the patent failed to disclose leukapheresis as the technique which must be applied in order to prepare the pluripotent cells required as starting material in the method according to claim 1. Neither a copy of document E13 nor of documents E11 and E12 was filed within the opposition period or at a later stage of the opposition proceedings.
[15] The evidence in question could possibly have been submitted together with the statement of grounds of appeal, as a reaction to the adverse decision of the opposition division. However, in its statement of grounds the [opponent] neither relied on documents E11, E12 and E13 nor filed copies thereof. Incidentally, it should be also noted that the adverse finding of the opposition division concerning the objection of lack of disclosure of leukapheresis in the patent was not even contested by the [opponent] in its statement of grounds of appeal. 16. It was only in its submission in reply to the communication under Article 15(1) RPBA sent by the board in preparation for the OPs that the [opponent] relied on documents E11, E12 and E13 and filed copies thereof. However, no reasons were given which justified the documents having been submitted at this late stage of the proceedings, except for the remark that the documents in question were already “on file”.
It should be noted here that the evidence in question was certainly not filed pursuant to directions of the board (see Article 12(1)(c) RPBA), as the board had given no directions in this respect in its communication.
[17] In view of the circumstances outlined above, the board judges that the evidence in documents E11, E12 and E13 on which the [opponent] relied for the first time in its submission filed one month before the OPs before the board, was not submitted in due time. The fact that these documents were identical to observations filed by third parties during the examination proceedings, a copy of which was - as the [opponent] stressed – “on file”, does not change this judgement because, in the board’s view, the decisive issue is whether or not the [opponent] relied on these documents in due time for the board to be able to evaluate any possible evidence contained therein, and for the respondents to react thereto.
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