This appeal against the revocation of the opposed patent reminds us of how the Boards deal with late filed documents.
Preliminary procedural remarks in respect of the late filed material
[2] Pursuant to A 114(2) the EPO may disregard facts and evidence not submitted in due time by the parties. As far as the appeal procedure is concerned, the Rules of Procedure of the Boards of Appeal (RPBA) give the general directions as to the way in which the Boards of Appeal have to exercise their power to admit or disregard the material filed at different stages of the appeal proceedings.
[2.1] Article 12 delineates the basis of the appeal proceedings, providing that the appeal file should contain one comprehensive submission from each party. The purpose of this provision is that the exchange of the grounds and the reply should effect a defined and controlled initial phase of proceedings providing a moment in time fixed by the rules when a party’s case is deemed to be complete, any further material submitted being, in the terms of Article 13 RPBA, an amendment to the party’s case.
[2.2] It is commonplace that amendments to a party’s case filed in response to new objections raised by the other party or by the Board, are deemed to be filed in due time within the meaning of A 114(2) itself.
[2.3] As to the other amendments (which cannot be deemed to be filed in due time), it is in the Board’s discretion to evaluate their admissibility in the light of several criteria, the most common being listed in Article 13(1) RPBA: the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.
[2.4] Finally, after oral proceedings (OPs) have been arranged, an additional criterion has to be taken into account: the other party and the Board should be capable of dealing with the new issue without any adjournment of the OPs (Article 13(3) RPBA).
[2.5] These principles apply in the following paragraphs.
Admissibility of the declaration of the inventor
[3] The declaration filed with letter of 12 September 2012 includes some tests performed to assay the mechanical strength of some catalysts (section 3 of the declaration) and a review of the content of document D6 (section 4 of the declaration).
[3.1] In the light of the preliminary remarks, the Board notices that the tests included in the declaration cannot be deemed to be filed in due time, because they cannot be seen as a reaction to a new situation which was not already present at the time in which the grounds of appeal were filed, as the lack of experimental tests which would confirm an advantage of the specific catalyst was already a crucial point of the decision […], or at the latest after the [opponent] filed the letter of reply to the statement of grounds, in which a clear position was taken on the tests filed with that statement.
[3.2] The only justification put forward for the late filing, namely the time needed to have the tests authorised and performed, cannot justify their filing almost three years after the grounds of appeal, more than two years after the reply of the [opponent] and only 15 days before the convened OPs, all the more as the [patent proprietor] never informed the Board of any difficulty in providing further evidence, nor requested additional time to prepare such evidence.
[3.3] Apart from the unjustified late filing, the tests raise a number of questions about their significance, which could not be answered without an adjournment of the proceedings, including in particular the question whether the values of the mechanical strength depend only on the differences between the production method in D1 and in the opposed patent (in particular co-precipitation of chromium and aluminium hydroxides and formation of a catalyst in amorphous form) or on other parameters of the compared catalysts which do not appear in the claims (e.g. their particle size distribution) or on other features of the method of production which are present in other examples of D1, but do not form part of the tests (e.g. the presence of a calcination step as in examples 8 to 10 of D1).
[3.4] Finally, Article 15(3) RPBA, which provides that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party, does not go so far as to nullify A 113(1). On that basis, the [opponent], which chose not to attend the OPs, can rely on the procedural provisions mentioned above, namely that the decision would be made on the basis of the written case in the meaning of Article 12 RPBA and that no significant amendment of the case would be admitted which would go beyond what is foreseen by Article 13 RPBA (see also T 1621/09 [41-44]).
[3.5] For these reasons, the Board on application of the RPBA does not admit the tests included in the declaration filed with letter of 12 September 2012 into the proceedings […].
[3.6] On the contrary, the review of the content of document D6, which is based on the documents itself and on arguments which were already in the proceedings, does not pose any problem with regard to admissibility and is therefore admitted into the proceedings.
Admissibility of D7 to D11
[4] The contention that documents D7 to D11 were ipso facto part of the appeal proceedings only because they were mentioned in the description cannot be followed by the Board for the following reasons.
[4.1] First of all, such a contention is inconsistent with Article 12 RPBA: to be part of the proceedings and play an active role for a new argumentation the documents should have been singled out in the written submissions as being of possible relevance at some point in time. Having been introduced at the OPs before the Board without any previous indication, they are late filed and subject to a discretionary decision on their admissibility.
[4.2] This approach is consistent with the case law (Case Law of, 6th edition 2010, VII.C.1.7), according to which a document considered during the examination procedure is not automatically scrutinised in opposition or opposition appeal proceedings, even it is quoted and acknowledged in the contested patent. Only the document cited and acknowledged in the description of the contested patent as the closest prior art and on the basis of which the technical problem in the description was formulated remains an exception and forms directly part of the opposition or opposition appeal proceedings.
[4.3] Documents D7 to D11, although cited in the specification of the patent in suit, had been merely acknowledged as conventional background art therein […] and were not considered in the patent as essential or as the closest prior art and the starting point of the claimed invention.
[4.4] The [patent proprietor] did not provide any justification of their late filing and did not present any of those documents as more relevant than the documents on file, as, in its arguments, D1 remained the closest prior art and none of D7 to D11 was relevant for the analysis of the obviousness of the solution (they were only used as supporting evidence for the acknowledgement of an effect).
[4.5] Moreover, the [opponent] absent at the OPs […] and relying on the rules of procedure, could not have expected a new line of argumentation based on these documents and never announced in the written phase of the proceedings, which could have changed the analysis of the case and its counterarguments.
[4.6] Therefore, pursuant to Article 13(1) and (3) RPBA the Board considers it appropriate not to admit documents D7 to D11 into the proceedings.
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