Abstract on EPC2000 Art 114 for the decision T2716/19 of 10.01.2024

In T 2716/19 the board held that D24 should have been admitted into the opposition proceedings by the opposition division for the following reasons. Assuming the opposition division had correctly concluded that D24 was late-filed, the board found it had correctly assessed whether D24 was prima facie relevant for maintaining the then main request when deciding on its admittance. However, the assessment of the prima facie relevance of D24 should not have been limited to the subject-matter of claim 1 of the then main request. It should have extended to the subject-matter of the auxiliary requests on file, especially the subject-matter of claim 1 of then auxiliary request 6 (main request in the appeal proceedings). Extending the assessment avoided finding the potentially patentable subject-matter of an auxiliary request unallowable for the sole reason that a document, prima facie relevant to the subject-matter of the request, was not considered. Therefore, the opposition division, when deciding on the admittance of D24, while using the correct criterion of prima facie relevance, had used it in an unreasonable way because it limited its assessment to the subject-matter of the then main request. In accordance with G 7/93, the board exercised its power to overrule this admittance decision by the opposition division and decided that the decision by the opposition division to not admit D24 had to be set aside. Since the respondent referred to D24 in its reply to the grounds of appeal, i.e. at the earliest possible stage of the appeal proceedings, and based its inventive-step case on it, the board concluded that D24 should be part of the appeal proceedings pursuant to Art. 12(1), (2) and (4) RPBA 2007 (applicable according to Art. 25(2) RPBA 2020).