EP 3 023 472 B1 relates to a composition comprising HFC and HFO. HFC denotes hydrofluorocarbon, and HFO denotes hydrofluoroolefin.
Brief outline of the case
The patent was revoked and the proprietor appealed.
Opponent 1 withdrew its opposition in the course of the appeal proceedings.
Opponent 1 filed experimental report D41 in opposition. D 41 was admitted by the OD and was taken into account in the decision.
In appeal, the proprietor requested that D41 not be admitted in the procedure.
The board kept D41 in the procedure and confirmed the revocation.
The case is interesting in view of the fate of D41.
The filing of D41
Opponent 1 filed experimental report D41, in advance of the final date for making written submissions before the OP set by the OD under R 116.
This document was filed by opponent 1 in the context of IS. It contained data used by opponent 1 to show that the effect relied upon by the proprietor was not achieved across the whole claimed scope.
The proprietor’s request about D41
The filing of D41 could be seen as a reaction to the main request filed with the reply to the notices of opposition. However, this reply had been filed on 22.02.2021, i.e. more than one year before the filing of D41, which occurred only two months in advance of the OP. Therefore, D41 was filed late.
The proprietor argued that, in view of the short time remaining until OP, D41 should not have been admitted. Even assuming that admittance of D41 was justified, OP should have been postponed to give the proprietor sufficient time to analyse the results of D41 and prepare a proper response.
Such procedural handling had been adopted by the OD in parallel opposition cases on divisional applications of the patent. In those cases, opponent’s experimental data were only admitted on condition that the OP were postponed. However, such a postponement request was not granted by the OD in the case at hand. Therefore, the proprietor’s right to be heard was violated.
Additionally, the OD erred in considering D41 as prima facie relevant. The experiments carried out in D41 did not constitute a proper repeat of the examples of the patent. Instead, operating conditions which significantly deviated from those taught in the patent were chosen.
The board’s decision on the admissibility of D41
D41 had been admitted by the OD. The proprietor’s request amounts to a request for exclusion of D41 from the appeal proceedings.
The board doubted as to whether a piece of documentary evidence which was admitted into the proceedings by the OD and taken into consideration in substance in the decision under appeal could actually be excluded from the proceedings by the board.
The approach that on appeal, such an exclusion of evidence admitted or introduced into the proceedings by the OD is generally not possible implies that a patent proprietor’s legal position in relation to such a new piece of evidence presented during opposition proceedings is that it is to be given, during opposition proceedings, an adequate opportunity to respond to that new evidence.
For the board, even assuming that D41 could and should have been filed earlier, and thus that it was filed late, according to the Guidelines for Examination, E-VI.2, cf. March 2022 edition, applicable at the time, the decision under appeal was taken, whereby prima facie relevance was the main criterion to be applied by an OD when deciding on the admittance of late-filed evidence.
Therefore, the OD applied the right criterion when deciding on the admittance of D41. Moreover, there is no reason to conclude that the OD used the available criterion in an unreasonable way.
As regards the right of the appellant to be heard on D41, the board noted that no request for postponement of the OP is found, either in any letter submitted by the proprietor after D41 had been filed or in the minutes of the OP before OD.
On the contrary, according to the minutes, the proprietor discussed the content of D41 during the OP. After this discussion and the announcement of the admittance of D41, the proprietor stated in the OP that no additional request would be filed. There is thus no indication that the proprietor did not have adequate opportunity to react to D41 in opposition proceedings.
Hence, the board concluded that the proprietor’s right to be heard as regards D41 had not been violated.
Comments
The present decision is interesting for various aspects.
Admissibility of experimental data in general
In principle, experimental data should not be admitted in the proceedings without giving the other party a possibility to review the data and, if necessary, make counter-experiments. This applies even if the experimental data is filed within the time limit under R 116(1). See e.g. T 2051/09, T 1310/10, T 1223/10, T 1130/13.
Older similar decision
The present decision confirms T 1605/16. In this decision, the board held that according to the minutes of the OP, no request for a review of experimental data, submitted by the proprietor during OP, was filed by the opponent, so that the board could not find any violation of the right to be heard of the opponent.
Moreover, since the data were the subject of the OD’s decision they are part of the appeal proceedings and cannot be ignored.
De facto admissibility
Late filed evidence/requests/arguments/objections might become de facto admissible if they have been discussed in writing before Oral Proceedings
In T 780/05, document D8, which was submitted late, was admitted into the proceedings because, contrary to the opinion of the OD, it is to be regarded as prima facie highly relevant to the question of IS.
This document was already known to the proprietor from the proceedings before the first instance, was discussed again in the appeal proceedings and was also commented on by the proprietor. The latter thus had sufficient opportunity to deal with the disclosure of this document.
In T 68/02, document D16, late filed by opponent 1, was discussed extensively by the proprietor in writing, without objecting to its admission into the proceedings. For the board, the document was thus admitted in the procedure.
The board held that a late filed document which is already in the proceedings cannot later be declared not to be admitted without there being very exceptional circumstances.
In the present case, the results of the experimental data having been discussed in substance during the OP before the OD, said experimental data can be considered as de facto admitted in the procedure.
A word of warning
Discussing in substance a late filed submission, be it in writing or during OP, implies that this document is de facto admitted in the procedure.
Presented with experimental data, even filed within the time limit under R 116(1), if the other party does not request postponement of the OP, it cannot later claim that its right to be heard has been violated.
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