In the present case the patent proprietors tried to experimentally establish sufficiency of disclosure. So far, so good. Unfortunately, they oversaw an important aspect: that sufficiency may be a function of time.
[2.1] In reply to the summons to oral proceedings before the Opposition Division (OD) the [patent proprietor] filed documents D34 and D35 as evidence for the routine experimentation mentioned in the patent in suit by which the skilled person would be able to determine the values for the multiplication factors and the factor B. The OD decided not to admit these documents into the proceedings for the reason that “the students (who developed the experimental protocols for the routine experimentation, annotation by the Board) were allowed to use any open literature available to them including also publications after the priority date of the presently disputed patent”. In addition, the OD took the view that these documents were not prima facie highly relevant, because only theoretical procedures were described which had not been put into practice […]. The decision not to admit these documents was challenged by the [patent proprietor].
[2.2] If the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in an appeal, it is not the task of the Board of Appeal to review all the facts and circumstances as if it were in the place of the first instance, and to decide whether or not it would have exercised such discretion in the same way. Thus, a Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion that either the department of first instance has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limit of its discretion (G 7/93 [2.6]).
[2.3] In the present case the Board finds that the department of first instance has exercised its discretion correctly and in a reasonable way. The patent in suit refers in general to routine experimentation for the determination of the multiplication factors and the factor B without providing any information as to how the experimentation should be performed. Documents D34 and D35 were filed as evidence that it was possible to devise routine experimentation in order to determine the required factors with only the information given in the patent in suit and common general knowledge. The documents with the title “Exercise in “Routine Experimentation”“ consist of two parts. In the first part the background is explained. The problem is stated and the students are invited by Mr Scott Baker to develop an experimental protocol for the determination of individual effectiveness factors in the ratio Q. The second part provides the students’ answers. According to the instructions given to them by Mr Baker, the students were allowed to use “the open literature including textbooks and their general knowledge in chemistry, catalysis, reaction engineering and experimental design”. In other words, they were free to access any information available to them at the time they devised the experimental protocols, including the electronic file of the patent in suit, and to rely on general knowledge, which may not have been available to the person skilled in the art at the priority date of the patent in suit. The protocols were devised in 2009, 8 years after the priority date of the patent in suit. It is not apparent from the instructions given to the students that they had been made aware of the significance of this date for the development of their experimental protocols. Nor is there any indication in the students’ responses on which information or general knowledge they relied. Thus, admitting these documents into the opposition proceedings would have involved the risk of relying on information or knowledge which might have been acquired after the priority date of the patent in suit. The Board therefore concludes that for this reason alone the OD was within its right to refuse to admit them into the proceedings.
In view of the above, there was no need to decide on the admissibility of declarations by the students concerning this issue which were submitted by the [patent proprietor] for the first time a week before oral proceedings before the Board.
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