Zusammenfassung von EPC2000 Art 114(2) für die Entscheidung T1984/19 vom 31.01.2023

In T 1984/19 the board found that while an opposition division must have a certain freedom in admitting or disregarding late-filed evidence, the reasoning given in the contested decision for not admitting D16 into the opposition proceedings was insufficient in view of R. 111(2) EPC. From the decision and the minutes, the board was unable to comprehend which considerations had led the opposition division to the conclusion that the content of D16 did not go beyond the content of the documents on file and why D16 was considered not relevant for the outcome of the case, whether in view of novelty or inventive step. With reference to G 7/93, the board stated that in order to ascertain whether the opposition division had exercised its discretion properly, it was essential for the board to know which principles the opposition division had taken into account and which interests it had balanced. The board could not however ascertain from the decision why the opposition division had found that D16 was not sufficiently relevant to outweigh any other considerations speaking against its admittance, if it had indeed made such considerations at all. As to the sparse indications given by the opposition division as to why D16 was disregarded, the statement that D16 had been filed after the expiry of the period for filing an opposition was not part of the reasons for the discretionary decision, but a precondition for the exercise of any discretion. That D16 was not the only starting point used in one of several inventive step attacks was not considered by the board to be constituting reasoning either. The board failed to see any connection between the relevance of a particular document and the number of other documents cited. Regarding the opponent's (appellant's) statement that D16 did not contain any details with respect to the knitting structure, the fact that the closest prior art did not contain details with respect to the distinguishing feature was normally inherent to an inventive step attack and could not therefore have an impact on its relevance. Finally, as to the opposition division's statement that D16 did not disclose more features than D1 or D2, the board found that determining whether late-filed documents were prima facie more relevant than those already on file was only one of several aspects that needed to be balanced when taking the discretionary decision to admit or not admit late-filed evidence into the proceedings. Other aspects included the point in time at which the evidence was first presented and the amount of time available for the other party to deal with it and prepare a meaningful reply, or the complexity of the new submission and the expected lengthening of the proceedings that its admittance would cause. It was not apparent from the contested decision (nor the minutes) whether the opposition division had considered any of these aspects. It was not even clear in which sense the opposition division had considered D16 as being less relevant than the documents already on file. The board concluded that the opposition division's discretionary decision not to admit D16 into the proceedings was insufficiently reasoned on several levels. The contested decision was therefore to be set aside. The board further considered that D16 was indeed prima facie relevant for assessing whether the subject-matter of claim 1 of the main request was novel and/or for assessing whether it involved an inventive step. For these reasons, the board did not exercise its discretion under Art. 12(4) RPBA 2007 to disregard evidence that was not admitted in the proceedings before the opposition division. D16 (and D16a) were thus in the proceedings (Art. 12(4) in conjunction with Art. 12(1) and (2) RPBA 2007). On the question of remittal, the board was unconvinced by the appellant's (opponent's) argument that remitting the case would be detrimental to procedural economy. Procedural economy may always be negatively affected when remitting a case. However, it may or may not be outweighed by other interests, not least the interest of the parties to have their case heard by two instances as the respondent (patent proprietor) had argued, and in particular for both parties to be able to fully develop their arguments concerning the newly found prior art during the administrative proceedings before the opposition division. In light of the foregoing, which the board considered to constitute "special reasons" under Art. 11 RPBA 2020, the board availed itself of its power under Art. 111(1) EPC to remit the case to the opposition division for further prosecution.