T 179/07 – Unfulfilled Duty

All the parties filed appeals against the decision of the Opposition Division revoking the opposed patent. The decision of the Board of appeal contains some interesting paragraphs on the admissibility of late filed documents D16 and D20.

*** Translation of the German original ***

[3.1] [The opponent] filed document D16 about two months after having received the summons to oral proceedings (OPs), i.e. more than three years after filing the statement of grounds of appeal, without providing any justification for the late filing. It only pointed out that the [patent proprietor] had to be familiar with document D16 because it had been cited during the examination proceedings of the corresponding Japanese application.

[3.1.1] Even if this were the case, the Board is of the opinion that this fact would not relieve the opponent […] of its procedural duty to present its case (Sachvortrag) with all due care, as soon and as complete as possible.

[3.1.2] The Board is of the opinion that the [opponent] has not adequately fulfilled this duty. As mentioned by [the opponent] itself during the OPs, when asked by the Board, it only detected document D16, which had been cited by the Japanese Patent Office already in June 2007, after having received the summons to OPs, when re-examining the case that had been at rest (ruhend) until then. However, this new search (Nach-Recherchieren) for further relevant prior art has no perceptible causal link with the summons by the Board or the requests of the [patent proprietor].

[3.1.3] When assessing the admissibility of new evidence at so late a stage of the proceedings the relevance of the document is only one of several criteria to be taken into account; see Articles 13(1) and (3) RPBA. However, it should be noted that D16 does not disclose any concrete zeolite having replaced a transition metal as SCR catalyser. Moreover, only hydrocarbons (“HC”), alcohol and urea are mentioned as reduction agents. The only example discloses a SCR catalyser of the platinum/aluminium oxide type and the use of propylene as reduction agent. Moreover, figure 2 of D16 is merely schematic and, therefore, does not allow to draw exact conclusions on the NO/NO2 ratio in the exhaust gas to be fixed before reduction. Therefore, the Board is of the opinion that D16 is not prima facie more relevant than the prior art that has already been cited in the proceedings.

[3.2] Document D20 was filed by the [opponent] only on the day before the OPs (the records indicate receipt at 13:19 CET).

[3.2.1] [The opponent] itself indicated in its letter that document D20 is mentioned in paragraph [0005] of the opposed patent and is also cited in the search report. The prima facie relevance also followed from said paragraph [0005]

[3.2.2] It has to be noted that the [opponent] has not considered appropriate to introduce document D20 already during the opposition proceedings or at an earlier stage of the appeal proceedings despite of it being – allegedly – very relevant and because it had been familiar with this document from the search report and the description of the opposed patent.

[3.2.3] [The opponent] did not provide any reason for this particularly late submission in its letter. Nor was there any explanation why D20 was prima facie more relevant as the documents on file. The opponent did not offer an even rudimentary line of arguments based on D20 either.

[3.2.4] In its letter the [opponent] has only referred to the Guidelines for examination in the EPO wherein it is stated that the skilled person should be presumed to have had access to everything in the state of the art, in particular the documents cited in the search report.

This may be true in principle but it does not relieve an opponent or appellant of the procedural duty to present its case with all due care, as soon and as complete as possible.

[3.2.5] In any case the adverse party and the Board were not able to prepare themselves thoroughly and efficiently for answering the possible, relatively complex questions that would have had to be discussed during the OPs if D20 were to be taken into account.

[3.3] In view of the particular circumstances of the late filing of documents D16 and D20 mentioned above the Board has decided not to admit these two pieces of evidence into the proceedings, pursuant to A 114(2) as well as Articles 12(2)(4) and 13(1)(3) RPBA.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.