[1.1] The [patent proprietor] has filed nine new auxiliary requests 1 to 9 and a document D48 after the summons for oral proceedings (OPs), in a letter dated February 11, 2010, i.e. about six weeks before the OPs, and thereby amended its case (Vorbringen) with respect to the statement of grounds of appeal.
The admission of amendments of the case of an appellant after the filing of the statement of grounds of appeal is at the Board’s discretion. In particular, Article 13 RPBA provides:
“Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.”
[1.2] Late filed document D48 contains comparative trials with respect of the subject-matter disclosed in document D28. However, neither the statements of grounds of appeal nor the response to the summons to OPs dated October 14, 2009 announced comparative trials.
Thus the [opponents] had less than six weeks to assess these comparative trials in the light of all requests, including the new auxiliary requests 1 to 9 and possibly prepare comparative trials of their own. Therefore, the time left to these parties is much shorter than the period of four months that Article 12(1) RPBA imparts for filing a reply to the statement of grounds of appeal.
It is irrelevant that some of the [opponents] […] had knowledge of document D48 at least since July 2009 from another case, as did the [patent proprietor], because the [patent proprietor] had not announced any comparative trials. Therefore, the [opponents] could not expect the filing of the document at so late a point in time.
Moreover, the trials of document D48, even if known from another case, had to be assessed afresh in the light of the claims and arguments of the present proceedings.
The Board is also of the opinion that when filing comparative trials it is necessary to give the other parties to the proceedings sufficient time lest the principle of equal treatment of the parties be infringed.
As in the present case it would have been necessary to postpone the OPs in order to have sufficient time for analysing document D48, this document is not to be admitted under Article 13(3) RPBA.
[1.3] Subsequent to the extensive replies by the opponents, the last of which was filed on January 23, 2009, the [patent proprietor] has filed nine new auxiliary requests only six weeks before the OPs. Only the introduction of document D48 into the proceedings was given as a reason for justifying the late filing of these requests.
As document D48 is not admitted into the proceedings, the Board cannot accept this reason for the late filing of the new requests. […]
Thus the auxiliary requests 1 to 9 are not admitted, pursuant Article 13(3) RPBA.
The moral of the story: when you intend to file comparative trials before OPs, don’t forget to announce them as early as you can.
To read the whole decision (in German), please click here.