T 753/09 – Late Expertise

The opponent appealed against the decision of the Opposition Division to maintain the opposed patent in amended form.

During the appeal proceedings, the opponent filed an expert’s declaration:

The patent proprietor argued that the declaration of Mr G. was belated and should not be admitted into the proceedings. The background of Mr G., an alleged skilled person in the art, was left completely in the dark. He was not an independent expert, but one appointed by a party to the proceedings. From the fact that he only had signed the Italian declaration, but not the English translation, it could be deduced that he lacked sufficient language skills for understanding the translation. It was thus doubtful if he really had understood document E1, an English patent application, or document E2, a French patent application. The proprietor requested, in case the board would admit the declaration of Mr G. into the proceedings, that the board of appeal appoint an independent expert to produce an affidavit on the teachings of E1 and E2 or, alternatively, that the respondent proprietor be given the opportunity to file a corresponding affidavit.

Will the Board admit Mr G.’s statement?

[3.1] The declaration of Mr G. was filed by the opponent as a response to the summons to oral proceedings (OPs) issued by the board, ostensibly for demonstrating how the skilled person would interpret documents E1 and E2. From a procedural point of view, the submission is belated (Article 12(2) RPBA, for the applicable version see OJ EPO 2010, Supplement to the OJ 1, page 39), nevertheless such late submissions are normally admitted if sufficiently relevant and if the other party can reasonably react to the late filing.

[3.2] Firstly, it appears that the declaration does not provide more technical information than the documents E1 and E2 themselves, thus from a technical point of view it is not more relevant than the documents on file. In principle, it is the primary and everyday task of a board of appeal under the EPC, comprising at least two technically qualified members (A 21(3)(a)(b) and (4)) to establish what various technical documents teach to the skilled person. Given that the technical teaching of both documents is relatively simple, and given that patent attorneys normally have a technical background themselves, the explanation provided by Mr G. may as well be put forward in an equally convincing fashion by the authorized representatives of the appellants, with no less evidentiary weight before the board. Therefore, in order to establish the teaching of documents E1 and E2 there is no need to admit the declaration of Mr G.

[3.3] On the other hand, it is apparent that the appellant opponent seeks to add more weight to its previously developed technical argumentation by emphasizing the very fact that Mr G. has the same view in his capacity as an expert, i.e. a skilled person by definition. The respondent proprietor has various options to deal with such late filed evidence, since an expert declaration must be considered not just an argument, but evidence pursuant to A 117(1)(e). It is certainly open to the other party to contest the expert qualifications of Mr G. (which the respondent proprietor did), but more importantly, if statements of an expert indeed require expert knowledge, and for the same reason a greater evidentiary weight should be attributed to them than to “simple” statements of a party, then the possibility must be given to the other party to have such an expert declaration verified or possibly refuted by another expert having the same qualifications (as also requested by the respondent proprietor as an auxiliary measure). Such a defense (sic) against an expert’s declaration requires quite some time.

In the present case the expert declaration was submitted less than two months before the OPs, not leaving enough time for the respondent proprietor to prepare a suitable counterstatement, also given the holiday season between the submission and the OPs. Article 13(1) RPBA stipulates that

“Amendments [to a party’s case] sought to be made after OPs have been arranged shall not be admitted if they raise issues which ... the other party ... cannot reasonably be expected to deal with without adjournment of the OPs”.

This being the case here, the expert declaration of Mr G. is not admitted into the proceedings.

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