Tuesday, 27 September 2011

T 578/08 – Not Automatic

This decision, to which my previous post was dedicated, also has an interesting paragraph on the admissibility of two late filed documents, D5 and D6.

*** Translation of the French original ***

[3.1] In its decision G 7/93, the Enlarged Board of appeal (EBA) has explained, as regards the exercise of the discretionary powers by the Examining Division (ED) within the framework of R 86(3) EPC 1973 that
“… it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles …, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.”
These general principles set forth by the EBA apply to all reviews of decisions resulting from the exercise of the discretionary powers of the preceding instance.

[3.2] As regards the admission of documents filed belatedly during the opposition proceedings, the established case law has determined that the crucial criterion for decision is whether [the document] is prima facie relevant. This is a discretionary decision of the Opposition Division (OD), which decides on a sovereign basis (souverainement) whether [a document] is relevant or not.

In the present case, the criterion of prima facie relevance, which has been laid down by the case law, is the criterion used by the OD for discarding documents D5 and D6. Therefore, the OD has not used unreasonable criteria.

The assessment of the OD is not manifestly erroneous either, because the substantial teaching of document D5 concerns efficient control of water removal in a process for extracorporeal blood purification that allows to maintain an appropriate volume of blood in the body of the patient. This document does not deal with calculating recirculation. Therefore, there is good reason to think that this document is not prima facie more relevant than other documents in the opposition proceedings which disclose means for determining the recirculation of blood. Thus the OD has not applied the criterion of prima facie relevance in an unreasonable way.

Consequently, the discretionary decision of the OD to discard document D5 does not result from the use of an erroneous criterion of assessment or from un unreasonable way of exercising its discretionary power. It follows that the Board has no reason and is not entitled to set aside this decision.

[3.3] The [opponent] asserts that document D5 has been filed in due time before the oral proceedings (OPs) and does not raise any technical difficulties, so that neither the OD nor the [patent proprietor] had difficulties in understanding the document or the objections that had been formulated on this basis. Therefore, the document should have been introduced into the proceedings.

The Board cannot share this opinion. Even if the examination of document D5 did not raise any particular difficulties, this does not change the fact that the OD has the discretionary power not to admit new documents into the proceedings if it considers that their prima facie relevance is not such that it would change the decision. The reason for this way of proceeding is that it allows to combine procedural economy and then duty of maintaining patents only if they are valid.

[3.4] The same reasoning holds for document D6 because the OD also concluded that it was prima facie not relevant.

For the same reasons as provided above, the Board considers that it should not question the discretionary decision of the OD.

Furthermore, during the appeal proceedings, document D6 has only been used together with document D5, which has been used as starting point in an argument concerning lack of inventive step. Consequently, the absence of D5 from the appeal proceedings necessarily has to lead to this argument being held invalid. It is for this reason also that D6 alone should not be admitted into the proceedings, because no reasoning based on D6 alone has been submitted during the appeal proceedings.

As D6 is cited in the application underlying the opposed patent, the [opponent] considers that it automatically has to be part of the proceedings, in application of decision T 536/88.

The Board does not share this opinion. According to this decision,
“a document indicated in the European patent as the closest or important prior art for the purposes of elucidating the technical problem set out in the description nevertheless forms part of the opposition or opposition appeal proceedings even if not expressly cited within the opposition period.”
In the present case, D6 is cited only among other documents that illustrate the state of the art before the invention and, more particularly, a technology that is different from that of the invention, which consists in injecting a complementary substance into the circuit so that the recirculation can be determined. Therefore, the Board considers that this document is neither the closest prior art nor a document that is particularly relevant for the purposes of elucidating the technical problem.

[3.5] Moreover, the [opponent] considers that the OD would have had to examine the combination of D5 and D6 on the ground of inventive step and that, had it done so, it would have concluded that there was a prima facie lack of inventive step.

This argument fails because it does not take into account the reasoning of the first instance. The OD has concluded from its analysis that D6 did not disclose that the pump is driven in such a way as to generate a momentary variation of the blood concentration by filtering plasmatic water […]. Therefore, the OD has indirectly answered in the negative the question raised by the [opponent] because D6, which does not disclose one of the essential features of claim 1, cannot suggest the invention.

[3.6] It follows that documents D5 and D6 are not admitted into the appeal proceedings.

[3.7] As the [opponent’s] objections regarding the inventive step of the claimed subject-matter were based exclusively on these documents, the objections are unfounded (sans objet) and the appeal has to be dismissed.

To download the whole decision (in French), click here.

The file wrapper can be found here.