It is not advisable to file unannounced experimental evidence just one month before oral proceedings (OPs), because in most cases the Board will refuse to take such evidence into account. This is what happened in the present case. The case is interesting because the OPs were finally postponed (due to the general air traffic breakdown following the eruption of Eyjafjallajökull in Iceland) and because the patent proprietor had some good reasons for filing the results belatedly.
[1.1] According to Article 13(1) RPBA […], an amendment of the party’s case after it has filed its grounds of appeal or its reply thereto may be admitted and considered at the Boards discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA states that amendments made after oral proceedings (OPs) have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs.
[1.2] The Board notes the following facts, undisputed by the [patent proprietor]:
- the new data have been submitted by the [patent proprietor] almost three years after the [opponent’s] statement of the grounds of appeal and only about one month before the initially arranged date for OPs before the Board of 21 April 2010 […];
- these data aim at demonstrating an advantageous technical effect of the CW method of the invention vis-à-vis the prior art disclosed in document D23,
- the relevance of this citation in respect of inventive step, although not expressly considered in the decision under appeal, was at least extensively discussed in the grounds of appeal, - after the grounds of appeal the [opponent] has made no further submission preceding (and, thus, possibly justifying) the filing of new experimental data,
- the [patent proprietor] has not expressed in its reply to the grounds of appeal the intention to carry out experimental tests, nor has announced immediately after receiving the summons to OPs that experimental results were going to be filed before the hearing,
- it was not possible for the [opponent] to verify the new data or to provide counter evidence in the few weeks comprised between the date of filing of these data and the date initially scheduled for OPs, or in the additional few weeks available in consequence of the postponement of the OPs from 21 April to 18 June 2010 due to unforeseeable force majeure.
The Board concludes therefrom that the unannounced filing of the new data about one month before the initially arranged date for the OPs constitutes an amendment of the [patent proprietor’s] case that takes by surprise the Board and the [opponent] and that raises issues that this latter cannot reasonably be expected to deal with without adjournment of the hearing.
[1.3] The Board finds irrelevant in this respect the [patent proprietor’s] argument that the [opponent] should have - in the [patent proprietor’s] opinion - either preventively requested in the grounds of appeal sufficient time for providing counter evidence in the hypothetical case that experimental data were subsequently filed by the [patent proprietor], or at least reacted to the filing of the new data on 19 March 2010 by requesting a postponement of the hearing.
In the opinion of the Board, neither the presence or absence of a preventive generic declaration of intention in the grounds of appeal (to provide counter evidence to any experimental data possibly filed by the counterpart in the subsequent appeal proceedings) nor the [opponent’s] choice on how to react to the filing of the new data have any bearings on the question whether the unannounced filing of the new data about one month before the already arranged OPs takes by surprise the Board and the [opponent] and raises issues that these latter cannot reasonably be expected to deal with without adjournment of the hearing.
Moreover, the Board finds the further submission of the [patent proprietor] that the main reason for the belated filing of the new data was the difficulty (also mentioned by the [opponent]) in obtaining some of the ingredients needed for replicating the examples of document D23, insufficient for rendering admissible the filing of previously unannounced experimental data.
Indeed, even assuming that this difficulty was actually the sole reason for the delayed filing of the new data, still the [patent proprietor] should have acted differently in order to avoid taking by surprise the Board and the other party at such late stage of the appeal proceedings. For instance, it should have promptly informed the Board and the other party on the nature of the difficulty encountered and on the then ongoing attempts to overcome this difficulty.
Moreover, when the needed ingredients had become available, the [patent proprietor] should have again promptly informed the Board and the [opponent] that experimental work was finally going to be started, possibly announcing also the expected date for the filing of the results.
[1.4] Therefore, the Board has decided not to admit the new data into the appeal proceedings.
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