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T 1589/21 – Late filed documents illustrating common general knowledge – Coherence of case law?

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The patent results from a divisional application of EP 09732113/2 291 195, and relates to a vaccine for protection against Lawsonia intracellularis, Mycoplasma hyopneumoniae and Porcine circo virus.

Brief outline of the case

The OD held inter alia that the sole claim of the patent as granted (claim 1) did not contain subject-matter which extended beyond the content of the application and the earlier application, cf. Art 100(c). However, the invention as defined in claim 1 of the patent as granted was not sufficiently disclosed, cf. Art 100(b). The same applied to the invention as defined in claim 1 of each of auxiliary requests 1 and 2 (Article 83 EPC). Auxiliary requests 3 and 4 were not admitted.

The proprietor appealed the revocation.  

When entering appeal, the proprietor requested admission of two documents, D54 and D55, illustrating common general knowledge and filed an AR 5.

The board did not admit these documents under Art 13(2) RPBA21.

Contrary to the OD, the board concluded that the ground of opposition under Art 100(c) applied to claim 1 as granted. The same applied to AR1 and 2.

AR 3 and 4 had not been admitted by the OD, and the board did not admit them either under Art 12(4 and 6) RPBA21

AR 5 was not admitted under Art 13(2) RPBA21.

The board thus confirmed the revocation, but for another ground as the one decided by the OD.

Late submission of documents illustrating common general knowledge

The proprietor’s position

In a first line of argumentation, the proprietor argued that the documents illustrating common general knowledge, D54 and D55, did not need to be filed earlier because Art 123(2) and Art 76(1) were not part of the appeal, the OD having decided that Art 100(c) did not prejudice the maintenance of the patent.

In a further line of reasoning, the proprietor submitted that a party must be able to rely, at any stage of the proceedings, on common general knowledge and provide proof for that. This argument implies that a board does not have discretion to disregard documents (allegedly) supporting common general knowledge.

The board’s position

The first line of argumentation of the proprietor was dismissed. For the board, the opponent had already argued in opposition that omitting the target animal and the precise nature and dosage of the recited antigens in the claim was an unallowable intermediate generalisation. Documents D54 and D55 thus could have been submitted in opposition proceedings in response to these objections, irrespective of the fact that the opposition division came to the conclusion that the claims as granted complied with Art 123(2) and Art 76(1).

The second line of argumentation was as well dismissed. The board could not derive any obligation to admit late filed documents illustrating common general knowledge from the EPC or the RPBA21.

The documents at stake are evidence supporting allegations of fact which, under Art 114(2), may be disregarded if not submitted in due time by the party concerned. Art 12(3) and (5) RPBA21 confirms the board’s discretionary power in this respect.

The board therefore sees no reason for any preferential treatment of evidence for alleged common general knowledge. This is also in line with e.g. decision T 85/93, OJ EPO 1998, 183. The board also referred to the Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, V.A.5.13.1(c).


Late submission of documents illustrating common general knowledge

That late filed documents can be dismissed under Art 114(2) is not at stake.

There are however other decisions, posterior to T 85/93 in which late filed documents illustrating common general knowledge have been admitted in the proceedings.

Such examples are found in T 987/01, Reasons 5.2;  T 378/15, Reasons 1.2 and T 759/08, Reasons 2.2, 2d §. 2d half.

In T 144/06, Reasons 1.1, documents illustrating common general knowledge were filed when entering appeal. They were admitted by the board, which considered that there was no change in the factual or legal framework since the cited documents merely support the assertions which the opponent had made and had been accepted provisionally by the OD.

The present decision of the board has also to be contrasted with decisions T 1090/12, T 1370/15 and T 2526/19.

In all those three decisions, the respective boards felt empowered to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent or the grant of patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.

If boards are allowed to introduce ex-officio common general knowledge without an ounce of proof, it is to say, at least unfair, for a board to rely on a very old decision, i.e. T 85/93, to refuse the admission in appeal of documents illustrating common general knowledge.

In the Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, V.A.5.13.1(c), the board picked out the decision which suited it best and ignored the other decisions cited there.

On the different ground of opposition leading to revocation

In the board’s decision, the revocation of the patent was for the ground pursuant to Art 100(c), whereas the OD had revoked the patent pursuant to Art 100(b). The board must have considered the ground of opposition under Art 100(c) more relevant that the ground considered by the OD, i.e. Art 100(b). The board can be considered as having virtually set aside the decision of the OD.

The number of cases in which the decision of the OD is set aside is becoming inordinately high, in spite of the ODs having been “professionalised” by the creation of directorates specialised in oppositions.

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