May an Opposition Division (OD) be criticized for not having admitted comparative trials filed during the oral proceedings (OPs) ? Yes, under certain circumstances, as the present decision shows.
This appeal was against the second revocation of the opposed patent.
The patent had been revoked a first time in 2004, but the patent proprietor had filed an appeal and Board 3.3.01 had remitted the case to the OD for further prosecution based on the third auxiliary request (decision T 141/05).
One day before the OPs, opponent 1 filed document D26. The OD did not admit the document because it was late filed and not prima facie relevant.
During the OPs, the patent proprietor filed comparative tests. The OD decided not to admit them either.
The OD then revoked the patent for lack of inventive step.
The Board finally maintained the patent in amended form. Its decision contains an interesting paragraph on how the OD exercised its discretion.
Evidence not admitted into the first instance proceedings
[2.1] In the summons of the OD dated 12 November 2007 to attend OPs, 28 March 2008 was set as the final date under R 71a EPC 1973 for making submissions and/or amendments.
Document D26 was enclosed with a letter received by the EPO by fax in the afternoon of 28 May 2008. The comparative tests were intended to be submitted during the OPs of 29 May 2008.
Hence, both the document and the comparative tests were not submitted in due time.
[2.2] According to A 114(2)
“The EPO may disregard facts and evidence which are not submitted in due time by the parties concerned.”
According to R 71a EPC 1973, new facts and evidence submitted after the final date set in the communication annexed to the summons “need not be considered, unless admitted on the grounds that the subject-matter of the OPs has changed.”
The OD exercised the discretion conferred on it by the afore-mentioned provisions in the decision under appeal […].
It has to be assessed whether or not the OD exercised its discretion in the right way when not admitting document D26 and the comparative tests of the patentee into the proceedings (see G 7/93 [2.6]).
Document D26
[2.3] The OD indicated the reasons for not admitting this late filed document under point 3.1 of the reasons of the decision under appeal. There it explained in detail why it was of the opinion that the disclosure of this document was not prima facie relevant for ink jet ink compositions and why this document could have been filed earlier.
Regarding the reasons given by the OD for not admitting document D26, the Board is satisfied that the OD exercised its discretionary power correctly, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. Hence, the Board saw no reason to overrule the OD’s decision. Consequently, it did not admit this document into the proceedings.
The comparative tests which the patentee offered to submit during the OPs on 29 May 2008
[2.4.1] The OD indicated the reasons for not admitting this late filed evidence under point 3.3 of the reasons of the decision under appeal. Therein the OD stated that comparative tests filed at such a late stage would have taken the opponent by surprise. The OD goes on to argue as follows:
“The fact that example 18 of D9 is highly relevant for the current proceedings has been made clear already during the appeal procedure. Besides, said example consists of a single mixture of pigments, so that there could not have any ambiguity how a fair comparative example should be done.”
[2.4.2] How a fair comparative example should be done can be derived from point 4.3.1 of the decision under appeal, which refers to the comparative tests filed with the letter dated 28 March 2008. There it is stated that comparative tests should use inks with the same combination of pigments as in example 18 of document D9. The OD continued as follows:
“Furthermore, the additional examples were made with one specific paper and one specific printer (both different from the paper and the printer used in D9 and from the examples of the opposed patent). Moreover, document D18, tables 11-13 describes that the a* and b*-value depend significantly on the paper and on the printer used.”
[2.4.3] Document D18 was first cited by opponent II […] in its letter dated 20 September 2004 to show that an ink set consists of three or four inks of different colours […].
In the opposition and appeal proceedings prior to the issue of the written version of the decision under appeal, no reference was made to the fact that the a* and b*-value depend significantly on the paper and on the printer used. The OD thus introduced in its decision a new fact as a basis for the additional requirement to use certain types of paper and certain printers when preparing comparative tests.
Moreover, the OD did not take into account that the offer of the patentee to present additional comparative tests was the immediate reaction to the objection first raised during the OPs, that the comparative tests submitted under cover of the letter dated 28 March 2008 were deemed to be insufficient. It did not weigh the patentee’s interest of submitting evidence to overcome this objection against the interest to take a decision soon.
Lastly, in not admitting the comparative tests offered by the patentee, the OD did not take into account that it deemed further comparative data to be absolutely necessary in order to overcome its objections as to inventive step. The OD thus deprived the patentee of the possibility to defend its case effectively.
For these reasons, the OD did not use its discretion in a reasonable way by not admitting the additional comparative tests.
Therefore, the Board decided to overrule the decision of the OD in this respect and to admit into the proceedings these comparative tests, which the patentee resubmitted under cover of its statement setting out the grounds for appeal.
[2.4.4] However, the reasons given under point [5.2.10] of this decision show, that the admission of these comparative tests has no effect on the outcome of the present decision.
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