Abstract on EPC2000 Art 099 for the decision T1522/21 of 16.03.2023

In T 1522/21 the opposition division had admitted document D11 into the proceedings finding it prima facie relevant. The opponent had filed document D11 after the nine-month period under Art. 99(1) EPC but before the final date for making written submissions according to R. 116(1) EPC. The patent proprietor argued that the opposition division had not exercised its discretion in a reasonable way because D11 had not been filed in reaction to any amendment to the claims and could not have been considered as being prima facie relevant as its contents were not detrimental to the maintenance of the patent. The board noted that according to established case law, evidence submitted after the nine-month period was generally to be regarded as late-filed, unless special circumstances applied. It was however also established case law that if a discretionary decision of an opposition division was challenged in appeal, it was not for the board to review all the facts and circumstances as if it were the opposition division. A board should only overrule the way in which an opposition division has exercised its discretion if it comes to the conclusion that the opposition division used the wrong principles, failed to take into account the right principles, or exercised its discretion in an unreasonable or arbitrary manner. In the board's view the opposition division in the case in hand had exercised its discretion reasonably and according to the right criteria. During the oral proceedings before the opposition division, both parties had presented their arguments on the content and admissibility of D11. The minutes of the proceedings contained these discussions. The opposition division had based its ruling on the principle of prima facie relevance, which was a decisive principle in such decisions. Consequently, there was no justification to overturn the opposition division's discretionary decision and to exclude D11 from the proceedings. The patent proprietor had also requested that the case be remitted to the opposition division in the event that D11 was admitted into appeal proceedings. However pursuant to Art. 11 RPBA 2020, the board stated it should only remit the case if there were special reasons for doing so. The board observed that the appealed decision was already based on D11 and, thus, subject to review by the board in accordance with Art. 12(2) RPBA 2020. The board therefore did not remit the case to the opposition division.