T 1314/12 (Copolymer fibre/BOREALIS) 26-02-2014

Admissibility of the appeal

1. Rule 99(1),(2) EPC stipulates the mandatory contents of a notice of appeal and the corresponding statement of grounds of appeal. For an appeal to be admissible within the meaning of Article 110 and Rule 101 EPC, the following elements must be provided within the relevant time limits:

(a) name and address of the appellant,

(b) an indication of the decision impugned,

(c) a request defining the subject of the appeal,

(d) the reasons for setting aside the decision impugned, or the extent to which it has to be amended, and

(e) the facts and evidence on which the appeal is based.

1.2 Concerning the compliance of the present appeal with these requirements, the board notes the following:

1.2.1 Ad items (a) and (b):

The appellant and the appealed decision are identified in the notice of appeal.

1.2.2 Ad item (c):

The notice of appeal contains a request defining the subject of the appeal, i.e. "that the decision of the Opposition Division be set aside and the patent be revoked".

1.2.3 Ad item (d):

In its statement of grounds of appeal (see last paragraph of page 2; page 3, second to seventh paragraphs) the appellant objected that claim 1 as granted lacked novelty in view of a a public prior use and that dependent claims 5 to 10 lacked either novelty or inventive step.

1.2.4 Ad item (e)

With its statement of grounds of appeal, the appellant filed documents D9 to D14 as evidence for the alleged public prior use.

1.3 Thus, the Board is satisfied that the requirements of Rule 99(1),(2) EPC are met.

2. The respondent held, however, that no reasons were given in the statement of grounds of appeal as to why the impugned decision was erroneous. The appellant provided an entirely fresh case based exclusively on late-filed, newly cited evidence and arguments never mentioned before. Therefore, the appeal was not substantiated and, consequently, not admissible.

3. This argumentation does not convince the board in view of the following considerations:

3.1 The very general and vague sentence reading "Our comments on the validity of the subclaims filed with our initial statement of opposition still apply" which is contained in the statement setting out the grounds of appeal cannot be considered to constitute reasons for setting aside the contested decision. However, the appellant expanded the factual basis beyond the one underlying the opposition division's decision by presenting further facts and arguments as to why some of the claimed subject-matter lacked novelty and/or inventive step.

3.2 According to the case law of the Boards of Appeal of the EPO (see e.g. decisions T 389/95 of 15 October 1997, point 1 of the reasons), an appeal invoking a ground for opposition already invoked in opposition proceedings, i.e. remaining within the same legal framework, albeit being based on a completely fresh factual framework does not ipso facto lead to an inadmissible appeal.

3.3 Accordingly, in the board's judgement, the present appeal is admissible (Article 110 and Rule 99(1)(2) EPC).

4. However, this finding does not necessarily mean that the new items of evidence only filed during the appeal procedure may not be disregarded by the board pursuant to Article 114(2) EPC (see e.g. T 0389/95, point 2.14 of the reasons).

Amissibility of late filed evidence - Documents D9 to D15

5. Documents D9 to D15, all supposed to prove the alleged public prior use, were filed long after the expiry of the nine month opposition period. D9 to D14 were filed under cover of the statement setting out the of grounds of appeal, and documents D12a and D15 even later, after the issuance of the summons to oral proceedings and of the communication of the board.

6. Pursuant to Article 114(2) EPC, the board may disregard facts or evidence which are not submitted in due time by the parties concerned. More precisely, pursuant to Articles 12(4) RPBA, the board has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings.

7. In first instance (opposition) proceedings the opponent is expected to present all relevant facts and evidence. If it was not up to the board's discretion to admit or disregard evidence filed only at the appeal stage, depending on the circumstances even without considering the relevance thereof, an appealing opponent could submit allegedly highly relevant documents at any time in the expectance that they would have to be taken into account by the board (see e.g. decision T 0724/08 of 16 November 2012, point 3.4 of the reasons). This would mean that a proprietor could be obliged to repeatedly defend its patent against new attacks throughout the entire opposition and opposition appeal procedure. However, such a course of action clearly does not comply with the requirement of the EPC and the RPBA to present all relevant information within certain time limits (Articles 99 and 108 EPC, Rules 76 and 99 EPC, Articles 12(4) and 13(1),(3) RPBA).

8. In its assessment of the admissibility of the new late-filed evidence the board took into account the following:

8.1.1 Documents D9 to D14, allegedly evidencing a public prior use, were submitted with the statement of grounds of appeal, i.e. a long time after the expiry of the opposition period.

8.1.2 The only comment of the Appellant in this respect (see statement of grounds, page 1, middle of the page) reads as follows:

"Since the Opposition was filed, the Appellants have been able to obtain proof of sale of a fibre made from a composition satisfying the requirements of claim 1 of the Patent".

For the board, this statement as such cannot be considered as an explanation possibly justifying why the evidence and the objection based thereon had not already been submitted in the opposition proceedings.

8.1.3 Even after the respondent submitted that the late filing the new evidence amounted to "an abuse of procedure" (letter of 28 February 2013, paragraph

III.1), no explanation in this respect was given by the appellant, who only emphasised the allegedly high prima facie relevance of the new evidence (reply of 24 January 2014) and referred to Article 114(1) EPC.

8.1.4 In this connection, it is noted that the possibility of a(n) (allegedly) novelty-destroying public prior use of bi-component fibres according to claim 1 was apparently never before alluded to by the opponent in a way that could be considered to foreshadow the objection raised for the first time in the statement of grounds of appeal, although (as apparent from its statement of grounds page 1, last paragraph, page 2, fourth paragraph) the appellant itself and its predecessor companies had produced a copolymer ("Rigidex**(®)HD5218-EA-Y") allegedly meeting the definition of the second polymer component as given in claim 1 for many years, and sold it to "the world's largest producer of speciality polyolefin monocomponent (mono) and bicomponent (bico) staple fibres" (emphasis added).

Not least in the light of this statement of the appellant, it appears rather unlikely to the board that the appellant could not, already at the opposition stage, have become aware of and considered invoking a prior use as invoked in the grounds of appeal.

8.1.5 Absent any convincing reason possibly justifying the late filing of documents D9 to D15, the board concludes that the admissibility of said documents is more than questionable, already for this reason alone, irrespective of their possible relevance.

8.2 Moreover, for the board, the required degree of convergence of the debate, in the sense of a manifestly conclusive challenge to the validity of the opposed patent (see T 0389/95, points 2.14 and 2.15 of the reasons) is also not given.

8.2.1 Instead, reasonable questions and doubts were raised by the respondent as to conclusiveness of the evidence supposed to prove the alleged prior use, some of which even remained unresolved after the appellant completed his case by filing documents D12a and D15 in response to the reply of the respondent and the board's communication.

8.2.2 For instance, document D12, supposed to prove that the "Rigidex**(®) HD5218-EA-Y" copolymer, batch 064A0304, was spun together with a polypropylene polymer into the bi-component fibre "AL-Adhesion-C" commercialised by the company Fibrevisions A/S gives rise to a number of questions.

i) D12 consists of two sheets bearing printed text in Danish and comprising several blackened regions and fields filled with hand-written indications.

From the document per se it is not derivable that a fibre as claimed was actually produced and that the process/es referred to in D12 was/were carried out by the company Fibrevisions as alleged by the appellant, since this company name does not appear on either of the two sheets making up D12, and a product

"AL-ADHESION-C" is only mentioned on the second sheet.

ii) According to the appellant's explanations (letter of 24 January 2014, page 2, last paragraph) the first sheet of D12 refers to the production (spinning) process of the fibre produced and the second sheet relates to the stretching process of said fibre material ("AL-ADHESION-C"). The appellant held that both sheets were linked by the "Batch nr." 192825 visible on the first sheet and, allegedly, also on the second sheet.

However, the board does not accept the appellant's view that the two hand-written batch numbers ("Batch Nummer") on the second sheet are clearly legible as 192825. This issue is not even resolved by the enlarged copy D12a filed in reply to the respondent's criticism.

iii) Likewise, for the Board, the two relevant hand-written lot numbers ("lot nr.") of the polymer Rigidex**(®)HD5218-EA-Y copolymer used appearing on the first sheet of D12 are not clearly legible.

Due to the poor legibility of these two hand-written indications, the Board does not accept that they unequivocally designate the batch number 064A0304 referred to in Mr Kuhlburger's declaration D9c.

Even the submission of a further, enlarged copy of D12, referred to as D12a, did not resolve this issue.

iv) Moreover, as pointed out by the respondent, the two sheets of D12 respectively appear to indicate production dates (22-09-2005 and 19-04-2006) about seven months apart and the invoice D13, allegedly concerning fibres produced according to D12, is dated 20 April 2006 (see "Date of Order 06.04.20"), i.e. the product allegedly sold appears to have been produced before it was actually ordered.

For the board, the appellant's mere statement that the typed dates appearing on the two sheets of D12 were of "no relevance" since they were "unconnected with production of the individual batch number 192825" (letter of 24 January 2014, paragraph bridging pages 2 and 3), is not prima facie sufficient to dispel the doubts voiced by the respondent concerning the identity of or the link between the materials respectively referred to in the two sheets of D12.

9. Taking into account all the specific circumstances of the case addressed above, the board, in the exercise of its discretion under Article 114(2) EPC and Article 12(4) RPBA, thus decided not to admit any of documents D9 to D15 and, hence, to disregard their contents.

Conclusions

10. As a consequence of the non-admission of documents D9 to D15, the grounds of appeal invoked are deprived of their entire evidential basis and are, therefore, unpersuasive.

11. It follows that the appellant's request to revoke the patent in suit must be refused.