CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 3 553 096 B1 relates to a polypropylene composition

Brief outline of the case

The OD decided maintenance according to a new MR (MRn).

D12=Declaration of Friedrich Berger dated 26.05.2021 was filed in opposition.

The opponent appealed.

The board dismissed the appeal.

When entering appeal, the opponent filed a new document D14=Test Method ASTM F1921/F1921M-12 (2018) representing CGK.

We will discuss the non-admissibility of D14 in appeal.

The opponent’s point of view

The opponent submitted that D14 and its contents are part of the disclosure of the patent in suit and were obviously known to the proprietor. Moreover, this standard would constitute part of the CGK.

D14 should be introduced into the proceedings as meeting the criteria set out in T 536/88, Reasons 2.1.

The opponent noted that paragraph [0112] of the Patent states that HTF was determined using ASTM F1921-12-Method B.

The opponent also disputed that D14 constituted an amendment of its case, since it had always contested the relevance of the HTF values reported in D12.

In this regard, the opponent submitted that D14 supported the argument already brought forward in the notice of opposition, namely that the variability of the HTF was not known and that significantly different HTF values had been observed for the compositions of Examples IE2 and IE3 of the specification, which were compositionally very similar.

By filing D14, the opponent had merely built upon its consistent submissions before the opposition division.

The opponent also cited T 594/01, Headnote, in which it was found that an experimental value in quantitative analytical chemistry cannot be dissociated from the margin of uncertainty attached to the measurement .

The board’s decision

For the board, the filing of D14 constituted, irrespective of whether D14 can be considered to form part of the CGK, for which the RPBA provides no exemption, an amendment of the appellant’s case within the meaning of Art 12(4) RPBA, which may be admitted only at the board’s discretion.

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 the opponent refer to this standard before the OD, so that the part of the opponent’s submissions referring to that standard does not meet the criterion of having been admissibly raised and maintained in the proceedings before the opposition division.

Regarding T 0536/88, Headnote II, cited by the opponent, this decision of 14.01.1991 was taken having regard to the former practice of the boards, at a time when the RBPA, in a previous version did not contain provisions similar to those of present Art 12 RPBA. Accordingly, the general ruling of T 0536/88 expressed in its headnote cannot take precedence over the current provisions of the RPBA, which codify subsequently established case law.

Regarding T 0594/01, that decision does not deal with the admittance in appeal proceedings of a standard from which the margin of uncertainty associated with experimental values relied upon could be derived. It is therefore not relevant to the admittance of D14.

Whether a document identified in the European patent as important prior art for the purposes of elucidating the technical problem set out in the description nevertheless forms part of the opposition or opposition appeal proceedings, even if not expressly cited within the opposition period, must be assessed, as for any other item of evidence relied upon for the first time in the appeal proceedings, taking into account all the particularities and circumstances of the appeal case under consideration.

The board noted with reference to the requirements of Art12(4+6), a further criterion considered when deciding on the admittance of an amendment to a party’s case within the meaning of Art12(4) RPBA is whether it should have been filed earlier or whether it is justified as a legitimate reaction to late developments in the proceedings leading to the decision under appeal, cf. CLBA, 2025, 11th Edition, V.A.4.3.4.a).

First, the filing of D14 has not been shown to be the result of new developments in the first instance proceedings,

Considering that the method B of ASTM F1921 – 21 was already referred to in paragraph [0112] of the specification for describing the method used for measuring the HTF, the Board found no valid justification for the opponent essentially repeating in a subsequent letter in opposition the submissions based on a comparison between Examples IE2 and IE3 of the specification and waiting until the appeal proceedings to file D14 and address its content.

This is all the more the case if, as alleged by the opponent during the OP, knowledge of the precision of the test method described in D14 is considered necessary in order to evaluate the significance of the test results described in D12.

Second, concerning the relevance of D14, the board was not convinced that the reproducibility values (R) indicated in Table 3 of D14, to which the appellant refers, are suitable for assessing the probative value of the comparisons shown in D12. There is no indication that the results compared in D12, which include data from the specification for IE3, originate from different laboratories.

Therefore, contrary to the opponent’s submissions, reproducibility (R) is not the appropriate measure for assessing the probative value of the experimental data contained in the patent in suit and D12.

The board concluded that the opponent’s submissions based on D14 are not suitable for addressing the issues which led to the decision under appeal, namely for disproving that the experimental results of D12 would demonstrate an improvement of the HTF vis-à-vis the CPA.

Comments

In citing Headnote 2 of T 0536/88, the opponent wilfully turned a blind eye to Headnote 1 of the same: “Documents cited in the contested European patent are, in principle, not automatically subject to opposition (or appeal) proceedings”. That method B of ASTM F1921 – 21 was already referred to in paragraph [0112] of the specification, was thus not a reason to file D14 only when entering appeal.

This is exemplified in T 1522/21, Reasons 1.1.

According to T 0987/01 and T 0378/15, Reasons 1.2, knowledge of the skilled person is never late as it is inherent to his knowledge.

According to T 0759/08, Reasons 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.  

The board is right when T 0536/88 and the other decisions cited here were not taken under the valid RPBA.

It remains that they could still apply before ODs. Any document, even CGK has to be filed in first instance, if it has to have a chance to be part of the appeal procedure.

T 0894/24