Monday, 10 November 2014

Fleas, Lice, Flies and Late Filed Docoments - T 0584/09

The decision in the matter T 0584/09 has been issued almost one year ago but has not yet been sufficiently bemoaned in the blogosphere.

The patent in suit related to the use of agonists and antagonists of the nicotinergic acetylcholine receptors of insects for the non-systemic control of parasitic insects, such as fleas, lice and flies, on humans and on animals.

While this blogger supposes that appellants popping up with late-filed documents may be as pesky as fleas, lice and flies for members of the technical board of appeal, only the former enjoy the benefit of the right to be heard.

In the decision T 0584/09, the board considers the documents 9 to 12 as late filed although they had been filed (but not admitted) in the 1st instance no less than 5 years prior to the date of the oral proceedings.

This is how the board justifies this surprising decision (emphasis added, translation from German):

3. Admissibility of documents in the legal proceedings 
3.1. Documents (9) and (12) 
3.1.1. These documents were filed by the opponent in the opposition proceedings with letters dated February 22 and October 2008, however, they were not admitted by the Opposition Division to the legal proceedings. 
3.1.2. Pursuant to Article 12(4) of the Rules of Procedure of the Boards of Appeal the Board (RPBA) has the power “to hold inadmissible evidence… which could have been already presented in the first instance proceedings or were not admitted, there” (see Supplement to the Official Journal EPO 1/2013, pages 39-49). 
3.1.3. As part of the examination of the decision of the Opposition Division not to admit documents into the legal proceedings, a Board of Appeal should only overrule the way in which the first instance has exercised its discretion if the Board comes to the conclusion that the first instance has exercised its discretion according to the wrong criteria, without taking into account the right criteria, or in an unreasonable way (see T 640/91, Official Journal EPO 1994, 918, issue 6.3. of the decision grounds). 
3.1.4. Based on the written decision of the Opposition Division as well as on the protocol of the Oral Proceedings it is presented clearly and concisely, that the admissibility of these documents was discussed (see pages 5 to 7 of the decision of the Opposition Division and issue 2 of the protocol of the Oral Proceedings). This was not contested by any party. 
It was emphasized in the contested decision, that these documents were presented with a delay and it was sufficiently reasoned, why these documents are not relevant. 
Hereby, the Opposition Division has applied the criterion of relevance on the document presented with a delay, as it is proposed in the Examination Regulations (see Guidelines for Examination in the European Patent Office, E-III 8.6, December 2007 Edition). 
As a consequence, the Opposition Division has sufficiently reasoned its discretion and exercised according to the right criteria. Whether or not the Opposition Division may have erred in the judgment of the relevance of the documents, as the appellant argued, is not of any relevance here and has not to be examined by the Board. 
3.1.5. Therefore, the Board has decided not to admit the documents (9) and (12) into the legal proceedings.
In brief, the Technical Board of Appeal argues that it has no discretion on its own to admit documents which have not been admitted in the first instance for good reasons.

The board confuses two points: the cited decision T 640/91, Official Journal EPO 1994, 918, issue 6.3. of the decision grounds relates to the question whether a refund of the appeal fees is justified because opposition division has violated the right to be heard by not admitting documents at a late stage and examines the way in which the first instance has exercised its discretion for this purpose.

According to the established (and hopefully still valid) case-law, documents filed with the grounds of appeal should be admitted unless there are indications that the late-filing amounts to a procedural abuse.

PatLit hopes that this decision remains isolated.

The file wrapper can be found here.


Anonymous said...

This is not an isolated decision but there is a tendency in this direction, eg T1872/08, T1817/08 T1485/08; the decisions overlook that the factual Situation in the first instance is different from that in the 2nd instance. Corret in this respect: T 1253/09

Anonymous said...

Michael, I do not share your conclusory remarks. If the documents were to be admitted by the Board, with the current practice, a referral back to the first instance would almost certainly be required, thereby removing any incentive on the parties to file their case in a timely manner. By effectively refusing to consider them, the Board is further reinforcing its mantra that they are there to review decisions of a lower instance and not a first instance tribunal.

Michael Thesen said...

Thank you for the comments. My point is that the board argues that it does not even have a discretion on its own here.

Had the documents been filed with the grounds of appeal, the board would have had to take them into account unless evidence for the fact that the documents could have been filed earlier existed (A 12(4) RPBA).

Had the documents been filed after having filed the grounds of appeal, the board would have had a discretionary power to admit the documents under A. 13(1) RPBA.

The attempt to file documents in the 1st instance rather than waiting for the 2nd instance should not be policed by making reference to procedural economy.

What would you do with a document coming to your attention at a late stage of the 1st instance procedure?

Anonymous said...

My sense from the Boards is that if the documents call into question the claims as granted, then they could (in principle) have been filed during the first instance proceedings. There are plenty of decisions denying the admission of late-filed documents which were only found after a top-up search when the Opponent felt that the Opposition might or would fail.

Documents which, in principle, could not have been filed earlier include documents directed to denying inventive step for features which were not combinations of as-filed claims. Generally, Boards are somewhat more lenient on the admissibility of such documents.

Anonymous said...

And since they were going to kill the patent anyway, not introducing the documents means the decision could be written more quickly.