This is an appeal against the decision of an Opposition Division (OD) to reject an opposition.
The crucial matter was whether late-filed evidence relating to an alleged prior use should be admitted:
[1.1] The documents E1-E10, which relate to an alleged public prior use, were filed by the [opponent] with its letter of 8 April 2010, well after expiry of the nine month opposition period ending 5 December 2008. By applying the criteria of prima facie relevance, they were not admitted in the proceedings by the OD […].
[1.2] The Board shares the OD’s conclusion that E1-E10 were filed late without any good reason for doing so. There was indeed no change in the file during the opposition proceedings, such as a patent proprietor’s new request, which could have justified the late filing. Furthermore, the Board considers that the OD applied the principle of prima facie relevance correctly in a reasonable manner when exercising its discretional power (G 7/93 [2.6]). Consequently, the Board does not see any reason to overturn that decision.
[1.3] The reasons mentioned by the [opponent] for the late submission of E1-E10 are that the public prior use took place more than 20 years ago in a foreign country. Since the legal time limit for keeping documents had long elapsed, many of the relevant documents had been destroyed. This made it a huge burden to retrieve the necessary pieces of evidence, so that the [opponent] could only file them as complete as possible after the opposition time limit. With respect to its letter dated 24 April 2008 sent to the respondent, in which it refers to the public prior use, the [opponent] argues that the documents in its possession at that time were considered not enough to constitute a complete chain of evidence, so that it did not wish to provide it in that incomplete form to the OD.
The Board, however, shares the respondent’s view that the [opponent] should have included an indication of the alleged public prior use in its notice of opposition and indicated/filed all evidence in its possession at that time, i.e. the drawings and pictures as annexed to its letter to the respondent dated 24 April 2008. Any further evidence, like the commercial documentation, could have been indicated to be filed later, indicating the difficulties in retrieving such documents in the archives, abroad and/or with third parties.
[1.4] The Board is of the opinion that the prima facie relevance test was also exercised correctly in that the OD considered that the evidence E1-E10 does not disclose a number of the claimed features (novelty) and does not deal with the problem of the contested patent of avoiding jamming of the overwrapping machine when pairing the packets with the respective sheets of packing material […]. Since there is a document (D4) that does relate to this problem, the Board can also not find fault in the OD’s reasoning to find the prior use less relevant as starting point. It also dealt with the relevance of the prior use as a teaching which could possibly lead the skilled person to the invention […] and found it also insufficient in that respect.
Thus, the OD dealt with all aspects of relevance of the prior use when not admitting it. It is, therefore, not part of the opposition proceedings and, as a consequence, not as such part of the appeal proceedings (A 114(2)).
[1.5] The late filing of the evidence relating to the alleged public prior use could have been “repaired” on appeal if the OD had not applied its discretion correctly. This is, however, not the case here as discussed above.
[1.6] The [opponent] accepts in the appeal proceedings that the guide in the alleged public prior use is located downstream, i.e. not upstream, from the cross station and now argues that this is not a “substantial” difference which could justify an inventive step. The skilled person using his common general knowledge would immediately think of positioning the guide on the other side if needed. It cites T 1/81, which establishes that inverting process steps cannot support inventive step and implies that a geometrical inversion can neither justify this. Similarly, it cites T 39/82, T 142/84, T 332/90, T 485/91 and T 25/97 for supporting that a new application of a known measure cannot lead to an inventive step if the problem does not change.
The above cannot lead to the Board to exceptionally admit the evidence relating to the alleged public prior use of its own motion in the appeal proceedings.
In assessing whether it qualifies as closest prior art, also the function of the guide has to be taken into account. In the alleged public prior use machine it has no function whatsoever with respect to the transparent packing material nor to guide the cigarette packs to that packing material. It guides the wrapped packs to the revolver 08.01, which is a different problem. Even if the above mentioned case law would establish the principles attributed to it by the [opponent], the present alleged public prior use would prima facie not fulfil them.
The evidence related to the alleged public prior use is therefore not admitted in the appeal proceedings.
A witness hearing on this matter is thus also not necessary.
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