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T 840/17 – De facto admissibility of a late submission

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The patent was maintained by the OD on the basis of a request filed during OP. Both proprietor and opponent appealed the decision.

It was in dispute whether an objection of lack of IS about claim 8 of the MR in view of NPL5 and E14 was admissible or not.

The opponent considered it was admissible, the proprietor was of the contrary position.

The opponent raised the objection of lack of IS against claim 8 based on the combination of documents NPL5 and E14 for the first time in their statement of grounds of appeal. Moreover, the opponent argued that the sole difference between the method of E14 and that of claim 8 of the main request was that claim 8 referred to a photovoltaic installation whereas that of E14 referred to a wind farm. NPL5 suggested that reactive power control was also known in photovoltaic installations.

The proprietor dealt with this objection in substance in their reply without raising any objection as to its admissibility.

The board gave a preliminary opinion concerning this question in its communication pursuant to Art 15(1) RPBA20 on the basis of these submissions and in view of the fact that the OD considered the subject-matter of claim 8 of the MR to be novel in view of NPL5 and in view of E14 in detail in points 6.7.1 and 6.7.3 of the decision under appeal.

In the board’s view, the main facts underlying the objection were discussed in the first instance proceedings. The only new aspects of the proprietor’s objection concern mainly the legal assessment of these facts.

The board was therefore satisfied that by taking this objection into consideration, the appeal was nevertheless directed to issues that had been discussed in the opposition proceedings.

The absence of any objection by the proprietor prior to the oral proceedings corroborated the board’s preliminary view, and the proprietor did not present any argument as to why the board’s preliminary view of taking the objection into account was incorrect.

The board further noted that the proprietor’s objection against the admissibility of the opponent’s objection, presented for the first time at the OP, could itself be considered a change in the proprietor’s appeal case, for which no special circumstances were presented.

The BA held that the subject-matter of claim 8 of the MR did not involve an IS in view of the combination of documents NPL5 and E14 .

The case was eventually remitted to the opposition division with the order to maintain the patent on the basis of the claim of AR18 (!) and a description to be adapted.

Comments

In general, discussion in substance of a late submission renders it de facto admissible.

When taking position in writing about late filed evidence/requests/arguments/objections it should be ensured that the party replying to it does this at least with a strong reservation, i.e. that it considers the late filed evidence as primarily late filed and therefore not admissible.

In T 805/13, the reservation concerned an objection under Art 123(2).

According to T 401/13, a late filed document which has been discussed in writing during the opposition procedure cannot be deemed inadmissible when entering appeal, although the opposition division did not take clearly position about the admissibility of said late filed document. The Board thus admitted the document in the appeal procedure

A late filed document which has been discussed in writing cannot be deemed inadmissible at the opening of the OP, cf. T 68/02 and T 323/10.    

Any submission going beyond the legal and factual framework of the opposition procedure, cf. R 76(2,c) or beyond the legal and factual framework of the appeal  procedure, should not be discussed in substance.

Rule of thumb

Late filed grounds/evidence/lines of argumentation/requests will become de facto admissible under the following conditions:

– the other party submitted observations in writing during the procedure before oral proceedings;

– the other party was allowed sufficient time for its analysis;

– they were submitted in response to completely new grounds/evidence/lines of argumentation;

– they were submitted in response to new requests, especially when those are late, e.g. filed during OP, or comprise features from the description.

– and/or to strengthen a previous line of argumentation, cf. T 1914/12 according to which the Boards have no discretion on the admissibility of belated arguments based on facts and evidence already in the proceedings.

I have seen a patent revoked for late prior art filed by the opponent before OP, but for which the proprietor explained in writing before the OP why they were not novelty destroying. The OD and the BA considered them novelty destroying…. It might not have changed the opinion of the OD or of the BA on the relevance of the late prior art, but taking position in substance has removed any possibility to address their possible non-admissibility.  

As long as a late submission is not admitted in the procedure it should not be taken position on its substance, besides merely requesting its non-admission due to its late character. Why also explain in advance of the OP to the other party what one thinks of the late submission?

https://www.epo.org/law-practice/case-law-appeals/recent/t170840eu1.html

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