This is an appeal against a revocation.
One of the disputed issues was whether the Board should admit comparative trials filed exactly one month before the oral proceedings (OPs).
*** Translation of the French original ***
[3.1] According to the RPBA, in cases where there is more than one party, appeal proceedings shall be based on statement of grounds of appeal and the reply to it, which has to be provided within four months of notification of the grounds of appeal. The statement of grounds of appeal and the reply have to contain the parties’ complete case (Article 12(1) and (2) RPBA). 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). The latter principle especially applies to the period following the summons to OPs because amendments sought to be made after this date are not admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs (Article 13(3) RPBA).
These provisions codify the established case law of the Boards of appeal regarding the admissibility of late filed experimental data. As to the exercise of the discretionary power to admit or to dismiss evidence that has not been filed in due time, the criteria established by the case law require the late filing of experimental data not to be due to a tactical abuse of procedure and to respect the equity of the proceedings, and that their admission into the proceedings respects the right to be heard of the other party (T 270/90 [2.2]).
[3.2] In the present case the comparative trials carried out by the [opponent] have been filed on September 17, 2012, i.e. about two years after the expiration of the time limit for filing a response to the statement of grounds of appeal, more than two months after the summons to OPs and only one month before the date on which the OPs were to be held.
[3.2.1] Thus it is undisputable that the [opponent’s] report on comparative trials is late-filed. Pursuant to Article 13(1) RPBA the admission of these trials into the appeal proceedings is within the discretion of the Board. Thus the Board first has to examine whether there is a justification for the late filing and whether this new evidence can reasonably be expected to be dealt with without adjournment of the OPs.
[3.2.2] The new trials of the [opponent] are intended to show that the selectivity of the coloration that is obtained by means of the claimed compositions is less pronounced that the one obtained with the composition according to document D3.
According to the [opponent] these trials were relevant and constituted a response to the line of argument based on the improvement of selectivity which had been presented for the first time during the appeal proceedings. Therefore, they should be admitted into the proceedings.
However, this line of argument of the [patent proprietor] has been presented in the statement of grounds of appeal dated February 18, 2010, and, therefore, cannot justify the late filing of the trials on September 17, 2012. The [patent proprietor] has contested the validity of the results presented in these trials and requested to be offered the possibility of carrying out counter-trials, which, according to the [patent proprietor] were necessary for providing an appropriate response. As the trials carried out by the [opponent] have been filed only one month before OPs, their admission into the proceedings would have the consequence of [necessitating the] postponement of the OPs in order to allow the [patent proprietor] to carry out the counter-trials, i.e. a situation which Article 13(3) RPBA seeks to prohibit.
As a consequence, the Board decides not to admit the comparative trials filed on September 17, 2012, into the appeal proceedings (A 114(2)).
[3.2.3] According to the [opponent], the [patent proprietor] could not have been surprised by these comparative trials because they had been announced in the response to the statement of grounds of appeal dated September 15, 2010, and the one-month period was sufficient to produce counter-trials. The [patent proprietor] dismissed this argument by pointing out that much more than one month was needed to perform comparative trials.
It is true that the [opponent] had announced, in its letter dated September 15, 2010, that it would comment on the comparative trials filed together with the statement of grounds of appeal and/or present counter-trials in case the Board found the trials of the [patent proprietor] to be admissible (see point 3.1 of the letter). However, if a party to the proceedings desires to obtain a decision in its favour, it has to be active in the proceedings and file the evidence and arguments which it considers useful for supporting its case, of its own motion and in due time. In the present case, the [opponent] has made the deliberate choice to delay the filing of the trials. However, a decision of the Board on the admissibility of the trials of the [patent proprietor] could not be taken before the OPs because they had been requested by both parties and because, as a consequence, this decision could not be taken outside the OPs. By acting in this way, the [opponent] has taken the risk of jeopardising the admissibility of its own trials into the proceedings because normally a decision has to be taken at the end of the OPs as chopping up (saucissonnage) the case into several OPs only for discussing the admissibility of late filed evidence would be inappropriate in view of the need for procedural economy (Article 15(6) RPBA).
Nor would it be reasonable to expect the [patent proprietor] to carry out new comparative trials one month before the date of the OPs before the Board, as such trials inter alia require the preparation of cosmetic compositions, their use in coloration trials, the evaluation of the results obtained as well as their impact on the patentability of the claims (see T 2415/09 [3.4]).
According to the [opponent] the case law of the Board of appeals, and in particular the decisions T 235/04, T 334/02, T 421/02, and T 1098/05, establish that one month is sufficient for carrying out comparative trials.
However, the cited decisions do not support this argument because they do not deal at all with the time required for carrying out comparative trials. It is true that in the underlying cases, comparative trials filed about one month before the OPs had been admitted into the proceedings. However, it had been possible to deal with this new evidence in the OPs because there is no indication in these decisions that the adverse parties had requested a postponement of the OPs in order to carry out counter-trials. Therefore, this argument of the [opponent] has to be dismissed.
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