Key points
- “Article 12(4) RPBA 2007 applies [] when assessing whether the Board should exercise its discretion not to admit documents D13-D16.
- “According to established case law, documents filed with the statement of grounds of appeal should not be held inadmissible if they are an appropriate and immediate reaction to developments in the previous proceedings, for example where they give the losing party in the opposition proceedings an opportunity to fill in the gaps in its arguments by presenting further evidence on appeal.
- “In the case at hand, the filing of documents D13-D16 is a normal and legitimate reaction to the admission of the main request filed during oral proceedings in opposition. Indeed the main request [filed during the oral proceedings before the OD and] admitted by the opposition division comprises new features taken from the description which were not foreseeable by the appellant (opponent). The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division. It is therefore legitimate for the appellant to file documents D13-D16 at the earliest possible occasion that is with the statement of grounds of appeal. It would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents. Such a course of action would effectively tie the hands of the appellant in appeal to only base their arguments on previously cited documents, having first given the respondent a free hand to amend the claim based on the description at the last moment in opposition proceedings (see T 0113/12).
- A question is if this case law will also be applied under Art.12(4) RPBA 2020. On the one hand, Art.12(4) RPBA 2020 is intended to introduce a new first level of convergence. On the other hand, if “it would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents” under the RPBA 2007, this would be the same under the RPBA 2020, it seems.
- Some other Boards may consider as a factor whether the opponent requested a break during the oral proceedings before the OD after the new amended MR was admitted by the OD. It is not clear to me if the opponent could be expected by other Boards to request adjournment of the oral proceedings before the OD in order to have time to find and file D13-D16. The present Board implicitly seems to answer this question in the negative by finding that: “The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division.”
EPO - T 0319/19
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-031919-it-would-be-inequitable.html
