3.4. Réexamen de décisions rendues par une instance du premier degré exerçant son pouvoir d'appréciation

In T 842/24 the board found that there was no legal basis for reversing in appeal a decision by the opposition division to admit new evidence (D29) into the opposition proceedings and thus to retroactively reject in appeal specific facts which had been admitted into the opposition proceedings if that evidence formed the basis of the decision taken on substantive grounds. It noted that this reasoning was not in conflict with T 989/23 where the auxiliary request admitted at the opposition division's discretion did not form the basis for the decision to maintain the patent in amended form.

The board recalled that the jurisprudence of the boards of appeal regarding the review of the opposition division's discretionary power under Art. 114(2) EPC was based on a principle established in T 640/91 and G 7/93. However, it noted that this principle was established in the context of reviewing a decision not to admit (emphasis by the board) a requested amendment after issuance of a R. 51(6) EPC 1973 communication (G 7/93) or not inviting a party to file further observations before issuance of a decision to refuse the application (T 640/91), and that it was also applied when reviewing discretionary decisions not to take a party's means of defence into account, e.g. documents. The board was aware that in a few cases this principle had also been invoked in the context of reviewing the opposition division's discretionary decisions to admit (emphasis by the board) documentary evidence on which the reasons for the decisions were based. This had been mainly limited to cases of errors in exercising discretion or procedural errors (T 1209/05, T 1652/08, T 1852/11, T 2513/11). In other decisions it had been questioned whether submissions admitted and forming the basis for the contested decision (evidence, claim requests) could be at all excluded from the proceedings in appeal even if the opposition division had exceeded the proper limits of its discretion in admitting them. The board nevertheless noted that in none of these decisions were the circumstances of the case such as to justify reversal of the discretionary decision.

Given the procedural asymmetry between situations where evidence was admitted or not admitted, the board had strong reservations as to whether the principle established in T 640/91 and G 7/93 was also appropriate for reviewing the discretion exercised in a decision to admit evidence into the proceedings. It explained that, in the context of non-admittance, the only way to challenge a substantive decision that did not take a (non-admitted) means of defence into account was to contest the non-admittance thereof. A review by a board of the discretion exercised by the opposition division was also imperative, if it was submitted that the exercise of its discretionary power constituted a substantial procedural violation..

On the other hand, a review of a decision by the opposition division to admit evidence or a claims amendment into the proceedings was not a necessary means to safeguard a party's right for a proper defence. The board held that the admittance of new evidence, even if its filing was not justified, did not lead itself (emphasis by the board) to an unequal treatment of the parties and therefore a procedural violation. Rather it was the absence of a proper opportunity for the opposing party to respond to that new piece of evidence and submissions based thereupon, once it had been admitted, which constituted a breach of the right to be heard. Art. 113(1) EPC reflected the principle that for inter partes proceedings each party should have a proper opportunity to reply to the case presented by an opposing party (G 4/95). The board noted that T 776/17 also made such a distinction.

The board added that a decision by the opposition division on substantive issues, based on evidence which has been admitted into the proceedings, could still be challenged in substance, on the ground that this evidence lacks relevance or probative value. It did not find any reason why a decision to admit an auxiliary request or piece of evidence should be reviewed on appeal if a party requested it, in order to determine whether discretion was exercised appropriately. The board should instead just fully review the appealed decision in substance. In view of this the board considered that it could not be derived from G 7/93 that the criteria stated therein for overruling the way in which a department of first instance has exercised its discretion also applied to the case where evidence was admitted and the decision taken on substantive grounds was based thereon. The board thus concluded that under the present circumstances it was not empowered to review the way the opposition division used its discretion to admit D29 into the proceedings.

In T 989/23 auxiliary request 17, filed with the statement of grounds of appeal, had first been filed in the opposition proceedings on the final date set under R. 116 EPC. The opposition division had decided that this auxiliary request was not open for examination as to its admissibility since it had been filed within the set time limit. Auxiliary request 17 was not considered by the opposition division since a higher-ranking auxiliary request was found allowable. The appellant-opponent requested that auxiliary request 17 not be admitted into the appeal proceedings, arguing that the division had misunderstood its discretionary powers.

In view of the line of case law holding that submissions admitted by the opposition division could not be excluded from consideration on appeal (e.g. T 487/16, T 1768/17, T 617/16, T 26/13, T 989/23, T 1568/12, T 2603/18, T 3201/19) the board first addressed the extent of its power of review. It explained that like an opposition division's decision to disregard late-filed submissions, a decision to admit such submissions into the opposition proceedings was a discretionary procedural decision which formed part of the opposition division's final decision on the merits of an opposition. A decision to admit late-filed submissions adversely affected the party contesting their admittance (in view of a possible adverse decision on appeal based on the admitted submissions, T 1549/07). Therefore, a board had the power to review an opposition division's procedural decision to take into consideration submissions filed late in opposition proceedings. Otherwise, the parties' right to a judicial review of an essential part of the opposition division's decision would be denied. Moreover, on appeal, a board would be compelled to accept a legal and factual framework, even if it is based on an erroneous exercise of discretion. As a consequence, requests, facts or evidence that had been admitted into opposition proceedings could be disregarded on appeal if the opposition division's decision suffered from an error in the use of discretion (T 1209/05, T 1652/08, T 1852/11, T 2197/11, T 572/14, T 341/15, T 326/22, T 776/17). The board thus had the power and duty to review the opposition division's decision to admit auxiliary request 17 into the opposition proceedings.

The board held that the filing of requests for amendment of the patent was governed by Art. 123(1) EPC, which gave the opposition division the discretionary power not to admit new requests for amendment (e.g. T 755/96, OJ 2000, 174; T 980/08, T 1178/08, T 966/17, R 6/19, T 256/19, R 11/20). The exercise of this discretion had to take account of the following: In inter-partes proceedings, each party had to be given equal opportunity to present their case and a fair chance to respond to new matter raised by the other party or parties or by the opposition division. Both the opposition division and the parties had to observe the principle of good faith (T 669/90, OJ 1992, 739; T 201/92). To expedite the proceedings and implement the principle of fairness towards the other party or parties, each party had to submit all facts, evidence, arguments and requests for amendments relevant to their case as early and completely as possible (T 326/87, OJ 1992, 522; T 430/89; T 951/91, OJ 1995, 202). This case law had been developed mainly in the context of Art. 114(2) EPC, pertaining to facts and evidence. Nevertheless, in view of the principles set out above, the rationale of this case law also applied to a patent proprietor's requests for amendment of the patent (e.g. T 582/08). Whether amended sets of claims should be considered in opposition proceedings or not did not merely depend on their filing within the time limit under R. 116 EPC, but also on the specific circumstances of the case (see also T 364/20). Consequently, the opposition division erred in denying that it had discretionary power to disregard auxiliary request 17. As a consequence, this procedural decision did not establish that auxiliary request 17 was "admissibly raised" in opposition proceedings.

The board agreed with the opponent that the filing of additional sets of amended claims (including auxiliary request 17) on 23 January 2023 was not a diligent and appropriate reaction to the opponent's submissions filed on 14 April 2022 and reiterated on 2 September 2022, or to the opposition division's communication of 30 May 2022. Since part of the defences submitted by the proprietor was not able to overcome the board’s conclusions on lack of inventive step and a later filed part raised new issues, the board did not admit auxiliary request 17 into the appeal proceedings.