Friday, 7 October 2011

T 299/09 – Just Can’t Do This

During the proceedings before the Opposition Division (OD), after the summons to oral proceedings (OPs) had been sent, one of the opponents had filed document E15. The OD had then admitted this document and had found claim 1 of the main request to lack inventive step over a combination of documents E15 and E12. It had then maintained the patent in amended form, based on auxiliary request 1.

The patent proprietor filed an appeal against this decision and asked the Board to dismiss document E15 as belated.

Here is the Board’s answer.

*** Translation of the German original ***

[2] The request to dismiss document E15 as having been filed belatedly […] could not be granted, for the following reasons.

[2.1] Pursuant to Article 12(4) of the Rules of Proceedings of the Boards of appeal (RPBA), without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA.

[2.2] In view of the fact that the OD has admitted document E15 into the proceedings and that the [opponents] have cited this document as relevant prior art in the statement of grounds of appeal, the Board has to take document E15 into account in the appeal proceedings and is not entitled not to admit document E15 into the proceedings pursuant to Article 12(4). The request of the [patent proprietor] to “dismiss [E15] as having been filed belatedly” can, therefore, only refer to a review of the decision of the OD to admit document E15, which had been filed belatedly during the first instance proceedings, into the proceedings, by making use of its discretionary power pursuant to A 114(2) EPC 1973.

[2.3] The case law of the Boards has established that [the Boards], when reviewing a discretionary decision of a first instance department, should only assess whether the department has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (T 640/91, T 201/98).

However, the [patent proprietor] has not given any arguments establishing that the OD has exercised its discretion in a wrong way. Nor can the Board see any evidence that could cast doubt on the correctness of the way in which the OD has exercised its discretion.

[2.4] The [patent proprietor’s] submission – that opponent 2 had committed an abuse of proceedings by filing document E15, which has its origin in the [opponent] itself, only during the OPs before the OD – has only been made at a very late stage of the proceedings.

The Board wishes to point out that it is not opponent 2 but opponent 1 that has filed document E15 before the first instance and that the applicant named in E15 is opponent 2. Therefore, contrary to the [patent proprietor’s] statement, document E15 does not have its origin in the party who had filed this document belatedly during the first instance.

This being said, the Board cannot see an abuse of proceedings in the mere fact that that opponent 1 has filed document E15 which has its origin in opponent 2 only after the summons for OPs before the OD.

Therefore, the decision of the OD to admit document E15 into the proceedings is not objectionable.

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

The file wrapper can be found here.