4.5.3 Prima facie relevance
According to established case law of the boards of appeal, a decisive criterion for admitting late-filed documents is their prima facie relevance, see e.g. T 1002/92, OJ 1995, 605; T 212/91, T 931/06, T 1883/12 and T 1511/14; for appeal proceedings, see chapter V.A.4.4.6 and in particular chapters V.A.4.1.2, V.A.4.4.6, V.A.4.5.7, V.A.4.5.8. and V.A.4.5.11.
Prima facie relevance is ascertained on the face of the facts, i.e. with little investigative effort, which reflects the need for procedural expediency in considering and admitting late-filed facts and evidence (T 1883/12).
In T 1348/16 the board considered that the opposition division, in admitting a document which it had found to be prima facie relevant and potentially prejudicial to the maintenance of the patent in suit, had based its decision on the right principles and that there was no reason to doubt that it had exercised its discretion in a reasonable way. This was not contradicted by the fact that a detailed analysis of the document later led the opposition division to conclude that it was actually not novelty-destroying and that another document represented the most relevant state of the art. Such an in-depth analysis was not part of the prima facie assessment of the relevance of a document.
In T 1525/17 the board observed 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 the opposition division had done in this case, having fully considered documents E5 and E6 in its thorough substantive assessment of inventive step. That assessment had not been referred to explicitly as a prima facie assessment of the documents' relevance; nor could it be regarded implicitly as a matter to be settled before dealing with their non-admission. The refusal to admit them therefore amounted to an erroneous exercise of discretion. See also T 1185/15 (necessary thorough analysis at odds with finding that document is not prima facie relevant) and T 346/16.
- T 21/22
Abstract
In T 21/22 document D20 was filed by the appellant (opponent) on the day of the oral proceedings before the opposition division but was not admitted into the proceedings because of its late filing and the fact that it was not prima facie relevant for novelty and inventive step.
Although the respondent had initially endorsed the arguments of the opposition division, they stated during the oral proceedings before the board that they withdrew their objection to the admittance of D20 into the proceedings.
The board observed that the opposition division had in fact conducted a comprehensive examination of late-filed D20 in respect of novelty and inventive step prior to concluding that it should not be admitted on the basis of its late filing and the fact that it was not prima facie relevant. The opposition division had therefore not only carried out a mere prima facie assessment but had fully considered D20 and the objections based upon it. Thus, the board held that there was no discretion left for the opposition division not to admit D20 into the proceedings (cf. T 1525/17, T 847/20, T 2026/15, T 2324/14), since it was de facto fully considered (and therefore implicitly admitted) by the opposition division.