3.4.4 Submissions admitted at first instance are part of the appeal proceedings

The issue in several decisions has been how far the boards can go in reviewing the admission of documents, requests or evidence in the first-instance proceedings. It is the boards' established case law that, on appeal against a decision taken by a department of first instance, it is not for the board to revisit the facts and circumstances of the case as if it were in that department's place and decide whether it would have exercised discretion in the same way (see chapter V.A.3.4.1 b) above).

In a number of decisions, it has been held that the EPC does not provide any legal basis for excluding on appeal documents, requests or evidence correctly admitted by the department of first instance, particularly if the contested decision was based on them (T 1852/11, T 1201/14, T 1227/14, T 525/15, T 1348/16, T 852/17, T 2049/16, T 1525/17, T 110/18). In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Art. 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings (T 617/16, T 487/16, T 2603/18).

In T 2049/16 the opposition division admitted D20, which was filed by the opponent one month before oral proceedings, because it found it to be prima facie relevant. It was argued that the opposition division should not have admitted the document because its late filing constituted a tactical abuse of proceedings. The board, however, was not convinced that the opponent's behaviour could be deemed an abuse of proceedings. The board considered whether it was possible to reverse the admittance on appeal. The board was not aware of any explicit legal basis that would make it possible to retroactively exclude evidence that has been admitted into the proceedings and decided upon by the department of first instance.

In T 572/14 the board noted that it can hold inadmissible and hence disregard a party's submission in the appeal proceedings only on the basis of Art. 114(2) EPC and Art. 12(4) RPBA 2007 and Art. 13 RPBA 2007. However, since document (21) was admitted by the opposition division and therefore became part of the opposition proceedings, it could not be excluded from the appeal proceedings pursuant to Art. 12(4) RPBA 2007 (see also T 467/08).

In T 1227/14, the board observed that the boards did not have the power to disregard on appeal submissions admitted by the opposition division in exercise of its discretion.

In T 104/17, the board could not immediately discern any legal basis for retroactively rejecting on appeal specific documents which had been admitted into the opposition proceedings and on which the contested decision had been based. Under Art. 12(1)(a) RPBA 2020, any such documents, having become part of the contested decision, were basically part of the appeal proceedings too. Art. 114(2) EPC did not appear to offer any basis for retroactive rejection either. Once the examination or opposition division had admitted a document, even a possibly late-filed one, and thus taken it into account in its decision, this fact could not be excluded from the proceedings or otherwise erased without repealing the entire decision and remitting the case for a new decision.

In T 2603/18 the board discussed the extent to which the admission of D23 into the opposition proceedings could be reviewed. The board held that, since D23 had then been cited as a basis for the contested decision at issue on appeal, it had become part of it. That alone meant it had to be considered in the appeal proceedings; otherwise, a full review of the contested decision would not be possible (see also T 26/13, T 1568/12, T 487/16). In the case in hand, therefore, a review of the opposition division's discretionary decision could not entail exclusion of D23, which consequently formed part of the proceedings. The board observed that some boards did nevertheless check whether the opposition division had erred in deciding to admit a document where this was alleged by a party (see T 1652/08, T 572/14, T 2197/11).

In T 467/15, the board held that the boards' discretion under Art. 12(4) RPBA 2007 explicitly covered only the rejection of facts, evidence or requests that could have but had not been submitted in the first-instance proceedings or that had not been admitted into those proceedings. Consequently, if the opposition division had admitted a submission into the opposition proceedings within the bounds of its discretion, the board could not disregard it on appeal. It appeared to be debatable whether, if one of the parties so requested, a decision admitting an auxiliary request should still be reviewed on appeal as to whether the discretion had been exercised appropriately (a review to this end was undertaken in relation to admitted documents in T 572/14, T 1227/14, T 2197/11, T 1652/08, T 1209/05, for example), or whether it was not open to such review (see T 26/13, referring to T 1852/11) because an admitted request forming the basis for the contested decision could no longer be excluded from the proceedings on appeal even if the opposition division had exceeded the proper limits of its discretion in admitting that request.

In T 487/16 the appellant requested that D7 be excluded from the appeal proceedings. The board stated that since D7 was part of the opposition proceedings and the decision was based on D7, it was part of the appeal proceedings (see also Art. 12(2) RPBA 2020). Furthermore, considering that the aim of the appeal proceedings was to review the decision under appeal in a judicial manner and in view of the appellant's main request for maintenance of the patent as granted, which required a review of the decision with regard to the conclusion drawn inter alia on the basis of D7, the board saw no legal basis on which it could be excluded from the appeal proceedings. Thus, in this regard, the board confirmed the case law developed under RPBA 2007 (cf. T 26/13, T 1568/12, T 2603/18). For the sake of completeness, the board added that Art. 12(4) RPBA 2007 would not provide a basis for excluding D7 from the appeal proceedings either since the document was admitted into the proceedings by the opposition division.

Also in T 858/17 the board questioned whether it had any discretion at all to exclude from the appeal proceedings a claim request that had already been admitted by the opposition division and made the subject of the appealed decision (Art. 12(2) RPBA 2020; see also T 1227/14). The board held, that even assuming that it had the power to exclude something from the appeal proceedings that had been admitted by the opposition division and taking decision G 7/93 into account, the board saw in the case in hand no reasons for excluding the main request from the appeal proceedings.

In T 467/08, the board refused the request to disregard on appeal comparative test results submitted in the opposition proceedings, on the basis that neither the EPC itself nor the RPBA provided for such a decision. The boards merely had competence to review a decision taken by the opposition division on whether or not to admit late-filed submissions, documents and requests filed in those earlier proceedings, or to decide themselves whether or not to admit submissions, documents and requests filed on appeal.

In T 1525/17, the opposition division had taken account of late-filed citations E5 and E6 throughout its entire substantive examination of inventive step, but then not admitted them into the proceedings. The board held that it was inherently contradictory to take late-filed documents as a basis for an in-depth examination of the patentability requirements, and so consider them as to their substance, yet at the same time declare them not admitted. As a rule, that documents had been examined as to their substance meant that a board could fully review their examination on appeal or at least that it was barred from holding them inadmissible under Art. 12(4) RPBA 2007 on the basis that they had not been admitted by the department of first instance, when their purported non-admission had in fact been inherently contradictory and so amounted to an improper exercise of discretion (see T 2324/14 and T 2026/15).

Also in T 346/16 the board took the view that it was necessary to take the documents into consideration when reviewing the opposition division's decision with respect to novelty and inventive step since the documents de facto formed part of the contested decision's reasoning despite the explicit decision by the opposition division to exclude them.