3. Substantive examination of the appeal

In T 2603/18, the board, in its communication in preparation for oral proceedings, discussed the extent to which the admission of D23 into the opposition proceedings could be reviewed. D23 had been submitted for the first time at the oral proceedings before the opposition division, i.e. after the date fixed in accordance with R. 116(1) EPC. Under R. 116(1), forth sentence, EPC, it had been at the opposition division's discretion whether or not to consider this late-filed evidence, but it had ultimately admitted it into the opposition proceedings. 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 and T 1568/12). 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. Art. 12(4) RPBA 2007 gave the board the power to hold inadmissible facts, evidence or requests which could have been presented or had not been admitted in the first-instance proceedings and thus did not cover evidence that had been presented and admitted in those proceedings. This being the case, the RPBA did not provide any legal basis for not admitting D23.

In T 467/15 too, the board held that if the opposition division had admitted a submission into the opposition proceedings within the bounds of its discretion, the board could not disregard it in the appeal proceedings. 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 (patent proprietor) requested that D7 be excluded from the appeal proceedings. D7 was filed after expiry of the opposition period. Despite the opposition division having discretion under Art. 114(2) EPC to "disregard" facts or evidence not submitted in due time, it decided not to disregard it. On the contrary, D7 was admitted into the proceedings and the opposition division based its decision regarding lack of inventive step on it. 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.

In T 617/16 the board noted that the EPC did not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision was based on them (see e.g. T 1549/07, T 1852/11, T 1201/14). 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 487/16, T 2603/18). Accordingly, the board saw no reason to reverse the opposition division's decision to admit D13 into the opposition proceedings.

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 this respect, the board shared the opinion expressed in T 617/16.

In T 184/17 the respondent (opponent) for the first time raised an inventive step objection which was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings. The appellant (patent proprietor) submitted that the inventive step objection constituted a fresh ground for opposition and did not consent to its introduction into the appeal proceedings, see G 10/91. According to G 10/91 (OJ EPO 1993, 408) a fresh ground for opposition (a ground neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings) may in principle not be introduced at the appeal stage. The Enlarged Board held that an exception to this principle was justified if the patent proprietor agreed to its introduction. The board stated that the new objection relied on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised on appeal stayed within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Art. 100(a) EPC for novelty. The board raised the question as to whether under such special circumstances, the new objection still fell under the principle as expressed in G 10/91, or whether it could be admitted into the appeal proceedings without the agreement of the patent proprietor. In the board's view what was decisive was that both lack of novelty and lack of inventive step were argued within the same factual and evidentiary framework, meaning that the passages and teachings relied upon by the opponent for substantiating both objections as well as the main body of the argument were the same, but only the legal conclusions drawn therefrom differed. The board held that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step could exceptionally be examined in the appeal proceedings without the agreement of the patent proprietor, if it stayed within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the case in hand, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked on appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same.

The board in T 2501/11 stated in its catchword: where prior publication of a citation has been admissibly disputed and the party bearing the burden of making the case for and proving it fails to provide a substantiated response, the board cannot treat that citation as prior art because opposition appeal proceedings are adversarial and so conducted in accordance with the adversary system of procedure, in which it is for the parties to make their cases and the boards' power to examine the facts of their own motion (Art. 114(1) EPC) is limited.

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. The EPC did not provide a legal basis for excluding, in appeal proceedings, documents which were correctly admitted into the first-instance proceedings, in particular when the impugned decision was based on them (T 1852/11, T 1201/14). See also T 1525/17 in chapter IV.B.2.2.