T 182/09 – It’s Independence Day

In this decision the Board had to deal with the admissibility of late filed document D14, a scientific publication, and related procedural questions (postponement of the oral proceedings (OPs), remittal).

Admissibility of document D14 into the proceedings

[2] Document D14 was filed by the [opponent] with the letter dated 2 December 2009, i.e. after filing its statement of the grounds for appeal. The [patent proprietor] objected to its introduction into the appeal proceedings for the sole reason that it was filed at a late stage of the proceedings.

According to A 114(2) the EPO may disregard facts or evidence which are not submitted in due time by the parties concerned. Thus, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

In addition, as respects admissibility of late-filed documents, it is established jurisprudence of the boards of appeal that a crucial criteria to be taken into account is whether the document is prima facie relevant and whether there is proper justification for its late filing to forestall tactical abuse.

[2.1] Document D14 is a two-page document titled “a hybrid network of synthetic polymer mesh and collagen sponge”.

This network is prepared by forming collagen sponges with interconnected microporous structures in the interstices of the synthetic polymer mesh […]. This hybrid network is associated with skin fibroblasts, which are biological components […]. The mesh made from a biocompatible polymer is shown in figure 1a. Figures 1b and 1c shown the collagen sponges having pores with an open cell pore structure interconnected in the interstice of the reinforcing component.

It therefore appears immediately that the structure shown in figure 2 of this document is novelty-destroying for claim 1 of the main request.

[2.2] The [patent proprietor] argued that document D14 was prima facie not relevant since the mesh density was not disclosed. Furthermore the foam component was not integrated with the reinforcing component such that the pores of the component interlock with the reinforcing component, figure 1c of document D14 showing even that the collagen was only on the top face of the mesh.

However, the mesh density of the structure can be determined from figure 1a of document D14

Fig 1a

which reveals that it clearly falls within the broad claimed range of 12 to 80%.

Figures 1b and 1c of document D14

Fig 1b

Fig 1c

clearly show that the collagen sponge is located on both faces of the polymer mesh and is integrated with it such that the spores of the sponge penetrate the polymer mesh and interlock with it. Moreover, it is indicated on page 1505, bottom of the left-hand column, that the polymer mesh was embedded in the collagen sponge sheet so that the fibre bundles of polymer mesh and the collagen sponges were alternately chained.

[2.3] Accordingly, document D14 is highly relevant since it unambiguously discloses the subject-matter of claim 1 of the patent as granted.

[2.4] In addition, the Board is not aware of any facts indicating that the filing of document D14 was deliberately delayed for tactical reasons. According to the [opponent], this document was filed promptly after it was brought to its attention from proceedings before the United States Patent Office. Furthermore, the [opponent] explained that it had no interest at all in delaying the proceedings, what the [patent proprietor] did not challenge. Therefore, the Board is not convinced that the late filing of document D14 was caused by tactical reasons as alleged by the [patent proprietor].

[2.5] The [patent proprietor] further argued that since this document was published by the Royal Chemical Society, it was easily retrievable by a simple search. Thus, the late filing of the document was due to the [opponent’s] negligence to carry out a comprehensive search during the opposition period. Also for this reason, document D14 should not be admitted into the proceedings, independently of its relevance.

However, whether a document can be easily retrieved by search cannot be objectively assessed and therefore cannot be a significant criterion for its admissibility into the proceedings. In this respect, the Board notes that, despite of its relevance […], document D14 was not cited in the application as filed, nor in the EPO Search report, and the [patent proprietor] was apparently not aware of it.

[2.6] The Board decides consequently to admit document D14 into the proceedings.

Request to postpone OPs and to set
a new deadline for filing substantive comments

[3] The [patent proprietor] argued that the Board should first decide on the admissibility of the late filed document D14 into the proceedings and then set a new deadline for the [patent proprietor] to consider the substantive content of the document.

However, since the relevance of a late filed document is an essential criterion for deciding on its admissibility into the proceedings and since any decisive issues constituting the decision may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment (A 113(1)), the relevance of document D14 must have been considered by all parties to the proceedings, i.e. including the [patent proprietor], before the Board decides on its admissibility. Accordingly, the [patent proprietor] cannot request to consider the relevance of a late filed document only after its admission into the proceedings has been decided.

The [patent proprietor] requested a new deadline to file its substantive response to the [opponent’s] objections based on document D14, or the arrangement of second OPs to discuss these substantive issues, since it did not know before the OPs the Board’s opinion on the admissibility of document D14 into the appeal proceedings.

However, a party which wants a decision in its favour must play a full part in proceedings and submit arguments in support of its case on its own initiative and at the appropriate time (see R 2/08 [8.5; 9.10]). It is part of the professional task of representatives to decide independently – that is, without assistance from the Board – how to pursue their cases (see T 506/91 [2.3]).

In the present case, the [patent proprietor] has deliberately chosen not to comment on the substance of document D14 and not to respond to the [opponent’s] objection of lack of novelty based on document D14, although this objection was known to him for more than two years. In the communication accompanying the summons to OPs, the Board indicated that document D14 was highly relevant and could even be considered as novelty-destroying and that the parties should be prepared to handle all the litigious issues during these OPs. The [patent proprietor] had sufficient time before the OPs to consider the objection of lack of novelty based on document D14 raised by the [opponent].

Under these circumstances, the [patent proprietor’s] requests to continue the appeal proceedings in writing, to set a new deadline for filing substantive comments or to postpone the OPs are refused.

Request for remittal to the department of first instance

[4.1] The [patent proprietor] requested that the Board remit the case to the first instance since the admission of document D14 into the proceedings created a fresh case. The document should be examined at two levels of jurisdiction, so that the [patent proprietor] is not deprived of the possibility of subsequent review.

Pursuant to A 111(1) the Board may exercise any power within the competence of the first instance or remit the case to that department. However, A 111(1) establishes no absolute right for parties to have matters raised in appeal proceedings examined by two successive instances; on the contrary, it leaves the Board of Appeal to decide upon a remittal in the light of the circumstances. Having arrived at the present stage of the appeal proceedings, the Board should therefore assess the appropriateness of a remittal.

In the present case, examination as to the requirement of novelty is made in respect of a two-pages document which was filed two years before the date of the OPs before the Board. The [patent proprietor] made no comment about the objection of lack of novelty raised by the [opponent] until the OPs before the Board although there was no ambiguity in the disclosure of the document, which immediately appeared novelty-destroying for claim 1 of the patent-in-suit.

Under the present circumstances, the Board exercises its discretion not to remit the case to the first instance, with the consequence that the conditional request of apportionment of the costs if the case is remitted does not apply.

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