The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent.
In what follows the Board deals with the request of opponent 03 to disregard comparative test results filed by the patent proprietor during the opposition proceedings :
[1.2] [Opponent] 03 requests the Board to disregard the comparative test results filed by the appellant with letter of 22 October 2007 for being late filed. With this, the [opponent] 03 in essence wants the Board to exclude a party’s submission made in the opposition proceedings retrospectively; this was confirmed by the professional representative of the [opponent] 03 when asked by the Board during the oral proceedings (OPs).
However, neither the EPC itself nor the RPBA provide for such a decision of the Boards of Appeal. The Boards of Appeal can merely review a decision taken by the OD concerning the admittance or non-admittance of late filed submissions, documents and requests filed in those earlier proceedings, or it can decide whether or not to admit submissions, documents and requests filed in the appeal proceedings.
[1.2.1] The former is subject to certain limitations.
Having regard to the somewhat contradictory setting of limits by the OD in its summons to OPs (22 October 2007) on the one hand and in the annexed communication (two months before the date of the proceedings, i.e. 22 September 2007) on the other hand, the Board can only establish that the issue of whether or not the comparative test results should be admitted into the opposition proceedings has been discussed at the OPs of 22 November 2007 before the OD as derivable from points 3 and 4 of the minutes of the OPs. The minutes, however, do not mention any result of this discussion except the statement that “the Proprietor is allowed to file any document to defend his case upto [sic] the limitation date set by the OD”.
Since the decision under appeal is entirely silent on this issue, the Board is not in a position to review whether and how the OD exercised its discretion. However, the Board cannot - as requested by the [opponent] 03 - put itself in place of the OD and review as such all the facts and circumstances. That is not the function of the Boards of Appeal (see G 7/93 [2.6]).
In contrast, the fact that the issue was discussed during the OPs and that the OD did not take an explicit decision to refuse to admit the comparative test results leads the Board to the conclusion that said submission of the appellant was part of the opposition proceedings.
The two cited decisions T 569/02 and T 718/98 concern two cases different from the present wherein very shortly (i.e. one month and about one week, respectively) before the date of the scheduled OPs before the Board experimental evidence and other documents were submitted by parties, which then in accordance with the established case law decided not to admit these documents into the proceedings (see Case Law of the Boards of Appeal, 6th edition 2010, chapter VII.C.1.3.4).
[1.2.2] Remains the question whether there are reasons to not consider the appellant’s submission of 22 October 2007 and its test results in the appeal proceedings.
The Board could reject a party’s submission merely within the framework of Articles 12 and 13 RPBA. However, none of the prerequisites provided for in said Articles are met:
As a consequence of the conclusion that said submission was part of the opposition proceedings it cannot be late filed in the appeal proceedings according to Article 13 RPBA. For the same reason they cannot be eliminated by the Board on the basis of Article 12(4), 1st alternative RPBA. In addition to this, they were not (explicitly) rejected by the OD and, therefore, cannot be disregarded on the basis of Article 12(4), 2nd alternative RPBA. Neither can it be held that the [opponent]s did not have sufficient time to react to them and to produce, if necessary, their own comparative tests, as they have been filed more than three years ago.
In this context it is to be noted that according to Article 12(2) RPBA the reply to the appeal should contain the [opponent’s] complete case. In this respect [opponent] 03 chose to limit itself to argue solely on the admissibility of this submission but not on its content. That is the choice of the [opponent]; however, it cannot expect the Board to provide intermediate rulings on such requests so as to facilitate the [opponent’s] decision whether to react in substance to such a submission or not.
[1.2.3] Taking account of the above deliberations the Board cannot accede to [opponent] 03’s request to exclude from the present proceedings the test results and further submissions based on it.
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