Zusammenfassung von Article 12(6) RPBA für die Entscheidung T0883/23 vom 26.09.2025

See also abstract under Article 87(1) EPC. In T 883/23 the board had to consider the admittance of document A35 – a poster describing the protocol of the clinical trial of example 3 of the patent – which was for the first time filed by the appellant opponent 1 with the statement of grounds of appeal and thus represented an amendment to the appellant’s case. Its admittance was therefore at the board's discretion under Art. 12(4) and (6), second sentence, RPBA. A35 had been published between the filing of the priority applications P4 and P5 and was presented by the opponents as an alternative starting point for the inventive step assessment, because it presented more information than the previously filed document D6 relating to the same clinical trial. The board held that, in view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Art. 12(2) RPBA), it was the responsibility of the opponents to file the evidence regarding the prior art on which they intended to rely for their arguments against the maintenance of the patent as granted or as amended according to any of the requests filed by the patent proprietor during the first-instance proceedings. The board did not accept the opponent’s argument that A35 had been particularly hard to retrieve. A35 had been obtainable from the USPTO following the filing of the Information Disclosure Statements for a US patent application of the patentee in 2019. The patent proprietor had filed its main request with the reply to the notices of opposition of 7 December 2021. The oral proceedings before the opposition division had been held on 24 January 2023. After the filing of the patent proprietor's main request, the opponents had thus more than a year to file A35 during the first-instance proceedings. In the board’s view, document A35 could and should therefore have been filed during the first-instance proceedings. The board was also not persuaded by the opponent’s argument that, in line with the considerations in T 1472/22, the theoretical possibility of the retrieval and filing of A35 at an earlier stage of the proceedings did not justify the rejection of its admittance under Art. 12(4) and (6) RPBA. The board pointed out that, in the case of T 1472/22, the decision was based on an auxiliary request filed by the patent proprietor during the oral proceedings before the opposition division. Thus, the opponent had no cause prior to these oral proceedings to file its evidence of a public prior use directed against the subject-matter of this auxiliary request. The board’s conclusion in that decision referred to the theoretical possibility to anticipate amendments in auxiliary requests that had not yet been filed by the patent proprietor, whereas, in the case in hand, the main request had already been filed with the reply to the notices of opposition. The board then assessed whether the circumstances of the appeal case justified the admittance of A35 into the appeal proceedings (Art. 12(6), second sentence, RPBA). Replying to an argument of the opponents, the board did not see how its conclusion (different from the opposition division), that claim 1 of the main request did not enjoy the claimed priorities, could in any way justify the late filing of A35, given the fact that the opponents had challenged the priority claim during the first-instance proceedings. The board also explained that in view of its considerations in points 2.2. to 2.3 of the Reasons (which are based on the primary object of the appeal procedure), neither the explanation provided for the late filing of A35 (difficulties to retrieve the document) nor the assertion that the patent proprietor was already aware of its publication justified the admittance of A35. Likewise, the asserted prima facie relevance of A35 claimed by the opponents did not suffice as a justification for its admittance in the appeal proceedings. The board also noted in this regard that the opponents' argument appeared inconsistent with their claim that A35 did not dramatically alter the assessment of inventive step. The board did therefore not admit A35 into the appeal proceedings under Art. 12(6), second sentence, RPBA.