Evidence that has been considered inadmissible by the Opposition Division (OD) because it had been filed belatedly will not necessarily be admitted in appeal proceedings only because it is re-filed together with the statement of grounds of appeal. This is what the patent proprietor in the present case had to find out when filing an appeal against the decision of the OD revoking his patent.
[5] The [patent proprietor] filed the experimental evidence which had not been admitted by the OD, i.e. experimental evidence originally included in the letters dated 26 June 2006 and 21 July 2006, with its statement of the grounds of appeal and requests its admission.
[6] The board is not convinced by the [patent proprietor’s] argument that “the EPO and the Opponent have now had ample time to evaluate the experimental data and the Opponent has had time, should it wish to, to repeat any experiments”. The board does not see why the [opponent] should react to experimental evidence which is not “in” the proceedings (even if it could be expected that it would be re-filed in appeal proceedings). The [patent proprietor’s] argument overlooks the difference between filing and admissibility.
[7] The admissibility of late-filed evidence during appeal proceedings is specifically regulated in Article 12(4) RPBA stipulating that, without prejudice to the power of the board to hold inadmissible evidence which was not admitted in the first instance proceedings, everything presented by the parties with the statement of the grounds of appeal shall be taken into account by the board if and to the extent it relates to the case under appeal.
[8] The present claims differ from those dealt with by the OD and in relation to which it considered the experimental evidence as irrelevant. Thus, in the board’s view, Article 12(4) RPBA, first half sentence does not apply here, but Article 12(4) RPBA, second half sentence is to be considered. In particular, the question arises whether, and if so to what extent, the experimental evidence relates to the case under appeal.
[9] According to the [patent proprietor] the data originally presented in the letter of 26 June 2006 demonstrate not only that alkali metal salts are indeed suited to reduce trisulfide variants in a recombinant product, but also that this effect can be applied to other peptides. However, the board considers that what the [patent proprietor] aims to demonstrate is sufficiently demonstrated by the data in the patent, in particular those of Figure 2. The evidential weight of the data originally submitted with the letter of 26 June 2006 is moreover questionable, inter alia, since there is no information as to when, during the recombinant production process, the salt was applied, i.e. during or after fermentation.
[10] According to the [patent proprietor] the experimental data as originally submitted with the letter dated 21 July 2006 was filed in order to exclude the mechanism of trisulfide reduction disclosed in document D1 as the mechanism by which the alkali metal or earth alkali metal salts of the present invention operate. However, feature or features relating to a mechanism are absent from claim 1 and therefore it is not necessary to prove that mechanism.
[11] The board thus comes to the conclusion that none of the experimental evidence submitted with the statement of the grounds of appeal is relevant to the present case. Therefore, it cannot be considered to “relate” to it. Hence, in accordance with Article 12(4) RPBA, second half sentence the board decides not to admit the experimental evidence filed with the statement of the grounds of appeal.
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