EP 2 818 527 B1 relates to an “Adhesive tape, in particular double-sided adhesive tape, and its use as adhesive for non-polar surfaces”.
Brief outline of the case
Following a first remittal, cf. T 1973/19, the patent was revoked by the OD.
In appeal, the board held that the MRn lacked N over D1= DE 102 08 843, but AR2, corresponding to AR3 in opposition was inventive over D1.
The board admitted, according to G 10/91, a late filed objection under Art 100(b), and remitted for a second time to the OD.
The case is interesting as it deals with the admissibility of CGK at the appeal stage.
CGK was represented by
- D24=DIN EN 1943:2002
- D25=Vernetzung von Haftklebstoffen auf Polyacrylatbasis; Z. Czech; Szczecin; 1999; Seiten 232-237
The filing of D24 and D25
D24 and D25 were filed following the board’s communication under Art 15(1) RPBA, and their admission was thus at the discretion of the board under Art 13(2) RPBA.
The opponent’s point of view on the admissibility of D24
D24 constitutes evidence of CGK and is, prima facie, highly relevant, as this standard is cited in granted claim 15 and in claim 1 of AR2 as a method of measurement for the shear strengths.
The content of D24 had therefore long been known to the proprietor, so that it could not be taken by surprise by its submission. Furthermore, D24 is relevant to the opponent 2’s argument that the shear strength measurements described in the contested patent and in D1 are not comparable with one another.
Since the opposed patent refers exclusively to D24 without deviating from its specifications, it must be assumed that the shear strengths specified therein were determined using test strips of appropriate dimensions.
The proprietor’s point of view on the admissibility of D24
The proprietor argued that there were no exceptional circumstances that could justify the late submission of D24.
The board’s decision on the admissibility of D24
The board found that D24 is the standard which, in accordance with paragraph 33, is to be used in relation to the opposed patent and, in accordance with granted claim 15, to determine the parameter of shear strength relevant to the invention.
It was also apparent from the OD’s decision that this parameter could be of particular significance both for assessing N over D1 and for assessing IS, taking D1 as the CPA.
The board also took into account that, despite having been filed at a very late stage of the proceedings, the proprietor must have been aware of the content of D24. Its admission could not therefore have come as a surprise for the proprietor.
In view of these exceptional circumstances, the board did not consider it justified to disregard D24 under Article 13(2) RPBA.
The opponent’s point of view on the admissibility of D25
D25 is an extract from a book on photo-initiators for acrylates and was submitted by opponent 2 in support of its objection of lack of IS against claim 1 of AR2, taking D1 as the CPA.
In opponent 2’s view, D25 reflects CGK and demonstrates that there is a relationship between shear strength, irradiation dose and sample thickness.
The proprietor’s point of view on the admissibility of D25
As for D24, the proprietor argued that there were no exceptional circumstances that could justify the late submission of D25.
The board’s decision on the admissibility of D25
The board agreed with the proprietor that the opponent 2 has not demonstrated any exceptional circumstances that might justify the filing of D25 at this late stage of the proceedings.
Furthermore, the parties agreed that the now valid AR2 corresponds to AR3 as dealt with in the OD’s decision, and that the question of the IS of claim 1 of this AR, taking D1 as the CPA, was already of central importance in the opposition proceedings and was addressed in the OD’s decision.
The board therefore saw no reason why D25 could not have been filed at an earlier stage.
D25 was thus not admitted under Art 13(2) RPBA.
Comments
Exiting case law on the admissibility of CGK
In principle, CGK of the skilled person is never late, as it is inherent to his knowledge.
According to T 0759/08, Reasons 2.2, 2d §, CGK cannot, in principle, be regarded as a complex or surprising matter, as it is well known to those skilled in the art. Nor can the submission of CGK – even though submitted after the expiry of the opposition period and therefore late – be regarded as an abuse, as such documents serve solely to confirm facts that are generally known to a skilled person.
Thoe considerations are still valid in opposition, but not in appeal after opposition.
The effect of the valid RPBA
The valid RPBA have changed the situation and CGK submitted at the appeal stage is submitted to the 3 levels of convergence defined therein.
In Reasons 2.3 of T 0894/24, the board noted that the decision under appeal does not refer to standard ASTM F1921-12, described in D14, which document was first filed at the appeal stage.
Nor did opponent1 refer to this standard before the OD, so that the part of the opponent’s submissions referring to that standard did not meet the criterion of having been admissibly raised and maintained in the proceedings before the OD.
In T 1522/21, Reasons 1.1.3, the board held that it is established case law, CLBA, 11th edition 2026, IV.C.4.4, a document is not automatically scrutinised in opposition or opposition appeal proceedings simply because it was quoted and acknowledged in the patent in suit. As the opponent has not referred to documents cited in the patent during opposition proceedings but, for the first time, with its statement setting out the grounds of appeal, they were not admissible under Art 12(6) RPBA.
In the present case, the opponent was thus lucky that D14 was admitted. The board’s decision is however pragmatic and can be followed in the case at stake, but not in general.
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