Brief outline of the case
The OD decided that:
- Claim 1 as granted lack N over D4=US 5,565,528 (Not in the ISR/EPO).
- AR1 was not admitted in the procedure.
- AR2 lacked of IS over CPA=D18=WO 02/22767 (Not in the ISR/EPO) + D21= Calculation of the proprietor based on D18 filed during OP before the OD
- AR3 was allowable.
D18 was a late filed document as it was filed one month before the OP before the OD.
The proprietor appealed the decision of the OD to maintain the patent according to AR3.
The proprietor’s request were, inter alia, as follows:
- as MR maintenance as granted
- or according to one of AR1-4, all filed with the statement setting out the grounds of appeal.
The proprietor also requested that documents D18 and D19 not be admitted into the proceedings.
The opponent’s requests were, inter alia, as follows:
– the appeal be dismissed, implying that the patent be maintained on the basis of AR4 before the board corresponding to AR3 found allowable by the OD
– AR3 before the board should not be admitted into the proceedings
The board decided that
- the MR was not allowable for lack of N as decided by the OD
- AR 1 lacked IS over D18 as claim 1 of AR1 did only benefit from a partial priority.
- AR2 lacked N over D4
- AR3.allowed the patent to be maintained in amended form
The file was remitted to the OD for the adaptation of the description
On the admissibility of D18
The board considered that the OD had correctly exercised its discretion in admitting D18 as it was considered relevant, especially since the OD gave a detailed reasoning why AR2 was lacking IS over D2.
On the admissibility of AR3 in appeal
The admittance of AR3 is governed by Art 12(4) RPBA07.
AR3 was submitted in response to the late-filed objection of lack of inventive step based on D18.
The objection of lack of IS based on D18 was raised for the first time during the OP before the OD.
The board held that the proprietor could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the OP.
The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the OP. Thus, the proprietor could only submit AR3 with the statement of grounds of appeal.
The board has thus decided to admit AR3 into the proceedings in accordance with Art 12(4) RPBA07.
I would think that the same conclusion would be reached under the RPBA20.
The substantial procedural violation
When faced with the admittance of an objection of IS based on D18 the proprietor requested adjournment of the OP.
Together with the filing of D18, the opponent had only raised a N objection based on this document. It is only during OP that the opponent also raised an IS objection based on D18 as the CPA together with the assertion that no effect had been shown to be present.
Not providing the proprietor with sufficient time to react to this attack by granting its request to adjourn the OP represents a violation of the appellant’s right to be heard within the meaning of Art 113(1).
Since admittance of the IS attack based on D18 led to the rejection of AR 2, the violation of the appellant’s right to be heard constitutes a substantial procedural violation.
The board further noted that the conclusion made here that a SPV occurred in relation to the opposition division’s admittance of D18 is not in contradiction to the board’s conclusion above that in admitting D18 the OD applied the right principle in a reasonable way.
The SPV did not arise due to the admittance of D18 but due to the fact that after this admittance, OP were not adjourned.
The decision is interesting in that it shows that a first instance division can correctly exercise its discretion by applying the right principle in a reasonable way, but at the same time commit a substantial procedural violation.
What appears important here is that the proprietor “protested” against the late filed document and especially against the late objection of lack of IS by requesting adjournment of the OP.
It is worth reminding what happened in T 1605/16. In this case, the proprietor filed during OP before the OD experimental data which was admitted by the OD.
As the opponent did not request a review of the experimental data submitted by the proprietor during OP, the board could not find any violation of the right to be heard of the opponent. Since the experimental data were the subject of the OD’s decision they were part of the appeal proceedings and could not be ignored in appeal.
If a late filed submission is admitted but at the same time brings about a fundamental change in the legal and factual framework of the opposition procedure, the affected party should request adjournment of the OP.
Not filing such a request can be to the detriment of the affected party.
On the other hand, systematically requesting adjournment of OP in view of a late filed submission is not a generally acceptable way to act or react.
Such a request has to remain reasonable. I experienced a proprietor requesting 4 days to gain knowledge of document of 4 pages. He got 2 hours and that was well payed. I also experienced an opponent filing on the day of the OP a 75 pages long EP application. When asked what the important parts to be consulted first were, he answered that it was the abstract. You can guess what happened.
This means that a late filed submission should be easily grasped in a reasonable time. If the submission is lengthy and complicated, the OD has always the possibility to decide adjournment of the OP. This can be done on its volition, which is very rare, but rather upon request of the affected party.
The party having submitted the late submission might then be faced with a different apportionment of costs for the new OP.
On the other hand, in view of the production pressure, the OD might also be inclined not to grant adjournment as the file will still not be decided on the day of the original OP. The door is then open for a possible substantial procedural violation.
Pragmatism should however prevail in the interest of all parties.