Key points
- This decision contains a number of important points regarding the admissibility rules for procedures before the OD.
- "The board considers that the opposition division decided according to the wrong principles and disregarded the principles of procedural fairness and of equal treatment of the parties in not admitting documents D59 to D62 and D81 to D90. The reasons are as follows."
- The OD had also held evidence inadmissible submitted by the opponents on a point where the preliminary opinion of the OD was in their favour. The Board: "the mere fact that the opposition division's preliminary opinion was positive for one party cannot in itself justify not admitting any further documents by this party which are filed by the final date set by the opposition division for making written submission under Rule 116(1) EPC. " (emphasis added)
- "the fact that the opposition division's preliminary opinion was negative for the appellant but positive for the respondents cannot justify a different treatment of the parties, since a preliminary opinion is neither binding nor definitive."
- The opponents filed a declaration D81 to support an earlier argument. The held the declartion, with annexes, inadmissible on the grounds iner alia that "the arguments of the declaration ... (D81) ... are reflected in the representative's arguments in the [accompanying] letter"
- The Board: "arguments submitted by a party's professional representative do not qualify as means of giving evidence under Article 117(1) EPC and may therefore have a different weight depending on whether or not they are supported by evidence in the form of a declaration by a technical expert accompanied by evidentiary documents supporting the content of the declaration. Accordingly, the opposition division was mistaken in holding that the declaration D81 with supporting documents on the one hand, and the representative's arguments on the other were equivalent and that this could justify non-admittance of [declaration D81].
- The opponents had filed post-published evidence under sufficiency, which was held inadmissible on that ground by the OD. The Board: " consideration of a document submitted in substantiation of an allegation of fact does not depend on whether or not the document forms part of the state of the art (see CLBA, section III.G.4.1). The board therefore does not agree with the opposition division that, as a matter of principle, post-published evidence is prima facie unsuitable for the substantiation of allegations of verifiable facts in the context of sufficiency of disclosure."
- I note that the OD reasoned that: "documents D82 to D90 "were published years after the priority date of the present application and are prima facie not suitable to establish the general knowledge and the skills of the skilled person required at the date of filing which is discussed in this declaration".
- The OD also violated the "principles of procedural fairness and of equal treatment of parties": "as noted above, documents D81 to D90 had been filed as direct and immediate response to new evidence, submitted by the appellant on the last day for making written submissions under Rule 116 EPC. In admitting the late filed documents D80 and its supporting documents D64 to D79 into the proceedings but not admitting documents D81 to D90 filed by the respondents in direct response, the opposition division did not respect the principles of procedural fairness and of equal treatment of parties."
- "Furthermore, prima facie relevance is to be assessed with taking into account the outcome of the proceedings (see CLBA, IV.C.4.5.3) and the opposition division gave no reasons why this criterion was not fulfilled for documents D59 to D62 [filed by the opponents]. Accordingly, the board cannot assess whether the opposition division has exercised its discretion in this respect correctly."
- The OD decided to revoke the patent, so this remark is not clear to me.
EPO
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/2023/05/t-043520-admissibility-rules-for-od.html
