T 1022/09 – What’s In Is In

If the opposition filed by one of the opponents is found not to be admissible, are the documents filed by him (alone) still in the proceedings? That is the question the Board had to answer in the present case.

The patent (directed at a process for packaging wine in aluminium cans) was opposed by nine opponents. Opponent 5 had his principal place of business in Argentina and filed his opposition via a professional representative. This representative subsequently withdrew, without another representative being appointed, even after the EPO had requested the opponent to do so ; this resulted in the opposition being deemed inadmissible.

All the oppositions were rejected by the Opposition Division (OD).

In the following passage, the Board deals with the admissibility of several documents:

[2.1] The [patent proprietor] argued that a number of documents filed in the opposition proceedings, as well as documents filed during the appeal proceedings were not admissible into the proceedings.

[2.2] D18, D28, D43, D52, D53 and D59 were each filed with a corresponding notice of opposition. In each case the filing of the document was substantiated by the document being discussed in detail with respect to at least one ground of opposition.

The OD considered that these documents were not part of the opposition proceedings for one or more of the following reasons: it was not proven that they were publicly available; their publication was not proven; their dates of publication were not proven to have been before the date of priority; or they were filed by opponent 5 whose opposition the OD retrospectively considered to have been inadmissible.

[2.2.1] In the view of the Board the question of whether the publication date or content of the respective document makes them relevant to the discussion of the grounds of opposition is a separate consideration to that of admissibility when the document is filed with an admissible notice of opposition and its alleged significance is discussed in that notice. In this respect the OD has confused the criteria for admissibility of late-filed documents with those for documents filed with and referred to in an admissible notice of opposition. In the latter case the content and publication date does not come into play for the question of admissibility.

[2.2.2] With respect to the documents filed by opponent 5 along with its notice of opposition the Board notes that at least at the time of filing the opposition the documents were automatically in the opposition proceedings as they were also referred to in that notice of opposition. The OD decided that the subsequent withdrawal of representation by the professional representative meant that the opposition was deemed inadmissible.

[… T]he Board does not consider it necessary to reach a conclusion on the admissibility of this opposition. With regard to the documents filed along with the notice of opposition the Board considers that since their filing was substantiated they were automatically in the opposition proceedings. This fact cannot be changed retrospectively by the subsequent withdrawal of representation by the professional representative.

[2.2.3] In the view of the Board all of these documents filed in the first instance proceedings are therefore in the proceedings.

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