Tuesday, 19 November 2013

T 1915/09 – Not Too Fresh

In this case the opponent filed an appeal against the decision to maintain the opposed patent in amended form.

The patent proprietor requested the Board to hold the appeal inadmissible because it was based on fresh documents (D6 to D13).

The opponent argued that these documents had been found in a search that had become necessary because the Opposition Division had revised the objective technical problem.

[1.1] An appeal shall be rejected as inadmissible if it does not comply with A 106 to A 108, R 97 or R 99 (1) and (2) and if any of such deficiencies has not been remedied within the relevant time periods specified in R 101.

[1.2] The [patent proprietor] considered the statement setting out the grounds for appeal to be insufficient […]. Hence, it claims that the appeal does not comply with R 99(2) which requires that the statement setting out the grounds for appeal “shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”.

[1.3] The statement setting out the grounds for appeal indicates in detail why the [opponent] considered that the subject-matter of the claims intended to be maintained by the opposition division lacked an inventive step in view of document D1 alone or its combination with, inter alia, document D6 […]. Thereby, said statement gave detailed reasons why the decision under appeal should be set aside and indicated the facts and evidence in support of the respective arguments.

R 99(2) does not exclude that such evidence is submitted for the first time in appeal proceedings nor does it require that this evidence is admitted into the proceedings (see T 389/95 [1,3]).

Therefore, the fact that the [opponent] relied inter alia on documents D6 to D13 in its statement setting out the grounds for appeal does not contravene the requirements of R 99(2).

[1.4] The [patent proprietor] did not claim that the appeal suffered from any other deficiency under R 101 nor is the board aware of such a deficiency.

Hence, the appeal is admissible.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Raoul said...

T 424/05-T 1146/06-T 2499/10-
T 1314/08-T 737/09 are a few more recent decisions making clear that the introduction of new relevant documents at the beginning of appeal is not objectionable, especially if they show why the impugned decision should be set aside.

In T 339/08, it was held that
documents could be filed upon entry in appeal if they are considered highly relevant.
Maintaining the legal and factual framework of the opposition proceedings does not take precedence over relevance when deciding on the admissibility of newly filed evidence.
The attempt of the proprietor to claim the appeal as being not admissible was thus doomed to fail.

Lucy said...

I've not read the file, but at first instance the opponent should have tried to stop the amendment being allowed on the basis it would necessitate a new search.

Anonymous said...

Lucy, you should have read the file