Key points
- In this opposition appeal between two repeat players in the detergent business, the Board only has to deal with admissibility.
- The proprietors appealed.
- "The appellants requested not to admit this document although it had been admitted into the proceedings by the opposition division and the decision was based on it."
- "In the jurisprudence there is also no consensus as to whether this is possible at all under the EPC. While some boards have decided that, at least in cases of an abuse of discretion, the discretionary decision to admit a document can be overturned even if the decision is based on that document (e.g. T 960/15; T 1652/08; T 572/14 or T 2197/11), other boards have decided differently (e.g. T 617/16, point 1.1.1 of the reasons, and T 2337/16, point 4.2 of the reasons)."
- "In the current case, this question can remain open because in the board's view, the opposition division exercised its discretion according to the right principles and in a reasonable way."
- D18 was "filed four days before the oral proceedings before the opposition division and providing supplemental information with regard to the ink used in [experimental report] D14 [filed by the opponents]. "
- "experimental report D14 [of the opponents] was filed with the grounds of opposition, and this, if the proprietors had indeed wanted to replicate the experiments, they could have requested the opponent to disclose which ink had been used already with the reply to the opposition. However, no such request had been made. Moreover, in view of paragraph 0047 of the patent, which states that the type of ink is not particularly limited, and further taking into account that the examples of the patent do not disclose which ink had been used either, there was no reason for the opponent to specify the type of ink used in D14."
- "the appellants [patentees] stated that they had decided to deal only with the fundamental deficiencies of D14 instead of presenting all corresponding objections when filing the reply to the notice of opposition. In particular, they explained that they saw no need for any counter experiments at that stage because D14 was seen as very weak evidence for the reasons given in the reply to the opposition."
- "the board observes that the principles of procedural economy and fairness of the proceedings require a party to present all aspects of its case as soon as possible, in particular in inter parte proceedings, since the parties have a duty to facilitate the swift conduct of the proceedings inter alia by submitting all relevant facts, evidence, arguments and requests as early and completely as possible"
- " if a party decides to present an aspect later in the proceedings, it must bear the consequences of this decision. In the current case, it was only with the submission [] one day before the final date for making submissions under Rule 116 EPC and two months before the oral proceedings [] that the proprietors disclosed in very general terms that non-aqueous solvent based inks had been used in the experiments of the patent and that they requested the opponent to disclose the type of ink used in D14. This information having been provided in D18, its filing thus constitutes a direct response to the request of the proprietors."
- "The [patentees] further argued that it would have been incumbent on the opposition division not to admit D18 or at least to postpone the proceedings on its own motion, in order to give the proprietor the possibility to replicate the experiments, thereby ensuring that the proceedings were conducted fairly. The appellants held that it was not their duty to request a postponement because they "could not be expected to accept and accommodate the procedural consequences" of the late filing of D18."
- "These arguments are however not convincing because from the way the proprietors had conducted the proceedings, the division had no reason to assume that they intended to carry out such experiments. In this context, the board emphasises that experimental evidence filed by one party is by no means always contested with counter experiments by the other party. Therefore and given the circumstances of the case, it could not be expected from the division to postpone the proceedings. Rather, it would have been incumbent on the proprietors to request a postponement in order to carry out replication experiments. However, no such request was made."
- "" The appellants challenged the contested decision only in that Dll and D18 should be declared inadmissible, that D14 should be disregarded and that D16 and D17 should be admitted into the proceedings. As the board does not follow either request, the appeal cannot succeed."
EPO
source http://justpatentlaw.blogspot.com/2023/06/t-119321-review-of-decision-to-admit.html
