T 0326/87 (Polyamide compositions) 28-08-1990

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. General procedural considerations

2.1 The central issue to be decided by the Board is whether reference (10), filed by the Appellant for the first time in the appeal stage, should be admitted into the proceedings, or be disregarded pursuant to Article 114(2) EPC, as not having been submitted in due time. The Respondent urged that the Appellant should not be allowed to introduce this newly cited document into the proceedings because of its lateness and insufficient relevance. The Appellant sought to justify its introduction on the ground that it constituted cogent and weighty evidence of common general knowledge at the time of filing of the patent in suit.

2.1.1 Article 99(1) EPC in conjunction with Rule 55(c) EPC, clearly lays down that the due time for filing evidence in opposition cases is at the date of filing of the Notice of Opposition. In addition, the note on "Opposition Procedure in the EPO" published in OJ EPO 1989, 417, gives further guidance in relation to the time and manner in which the parties' cases in opposition proceedings should be presented. Thus, in paragraph 2 of the above document, it is stated: "The EPO's aim remains to establish as rapidly as possible in the interests of both the public and the parties to the opposition proceedings whether or not the patent may be maintained given the Opponent's submissions. It seeks to achieve this by means of a speedy and streamlined procedure" (emphasis added).

Paragraph 8 goes on to state: "Under Rule 55(c), the Notice of Opposition must contain an indication of the facts, evidence and arguments in support of the grounds of opposition. This requirement is to be interpreted as meaning that the Notice of Opposition must at least indicate clearly to the proprietor the case he has to answer" (emphasis added).

Paragraph 13, in dealing with facts and evidence not submitted in due time, lays down: "In order to expedite proceedings, parties should in principle submit all facts, evidence and requests at the beginning of the procedure. Where this is not possible, the facts, evidence or requests must be submitted at the earliest opportunity. If relevant facts or evidence are submitted by a party only at a late stage of proceedings without very good reason (emphasis added) and if as a consequence unnecessary costs are incurred by another party, this will be taken into account in apportionment of costs".

2.1.2 Thus, the underlying principle, clearly recognised and implemented by the Boards of Appeal, e.g. in T 117/86, "Costs/FILMTEC", OJ EPO 1989, 401; T 182/89, "Extent of opposition/SUMITOMO", OJ EPO 1991, 391, is one of early and complete presentation of the parties' case as opposed to the piecemeal and tardy introduction of the arguments and supporting evidence. It is this jurisprudence, together with the express wording of Article 114(2) EPC, a wording which is clear and unambiguous in all the three languages, that sets the legal limit upon the inquisitorial duties of the Boards of Appeal, which duty, therefore, should not be interpreted as extending to carrying out a roving inquiry into facts alleged and evidence adduced at a late stage of the proceedings. In deciding upon the admissibility of a late-filed document in the light of the above principles, the Board must clearly be strongly influenced by what is frequently referred to as the relevance of the document sought to be introduced, by which is meant the evidential weight of that document in relation to other documents already in the case.

2.2 If a document is sufficiently relevant in this sense to be admitted, then, in the exercise of the Board's discretion under Article 111(1) EPC, the case, together with the document admitted, should normally be referred back to the first instance so as to allow the case to be examined in the light of the new document at two levels of jurisdiction so as not to deprive the patent proprietor of one such level of jurisdiction. Such a procedure is clearly desirable when the Board considers that the newly introduced document is of such relevance that it puts the maintenance of the patent at risk, whilst if this is not the case, then it is open to the Board to deal with the matter itself.

2.3 Regardless of the course of action the Board decides to adopt in the exercise of its discretion under Article 111(1) EPC, it is clear that the late filing by one party of a document or documents which are admitted into the proceedings, must increase the costs incurred by the other party in comparison with the situation if all the facts, evidence and documents had been filed, as they should be filed, within the nine-month opposition period. Article 104 EPC, in conjunction with Rule 63(1) EPC, is designed to redress the equity of the situation by the apportionment of costs incurred during the taking of evidence or in oral proceedings. As provided in Rule 63(1) EPC, such costs include the remuneration of the representatives of the parties; see decision T 117/86 supra and T 416/87 (OJ EPO 1990, 415).

The degree of apportionment must depend on the circumstances of each case, but where a document successfully introduced at a late stage is of such relevance that the Board decides to remit the case to the first instance in order to allow the patentee to have his case decided by two instances of jurisdiction, then in the absence of any convincing explanation for the late introduction of that document, the costs of any oral proceedings in the appeal should normally be borne in toto by the party responsible for its late introduction. The reason for this is clear, namely that the decision to remit to the first instance, and therefore not to deal with the matter in the course of the oral proceedings in the appeal, renders those proceedings superfluous in the overall sense, and the responsibility for this should, as expressed in costs, be borne wholly by the late-filing party.

Naturally, there may be mitigating circumstances in the above case, for example, where the document introduced was obscure and therefore difficult to get hold of.

3. Admission of document (10) In all the circumstances of the present case, the Board has decided to admit citation (10) into the appeal.

3.1 It is immediately clear from a prima facie consideration of document (10) that this citation cannot be regarded as a mere complement to references already considered by the Opposition Division as alleged by the Respondent. ...

3.3 There can thus be no doubt that the close technical relationship of the known compositions to the claimed subject- matter raises new issues of inventiveness in the light of the prior art already cited and, more particularly, the belatedly filed citation (10), which require a fresh assessment of the case.

4. Remittal to Opposition Division

In deciding on this appeal, the Board may, in accordance with Article 111(1) EPC, either exercise any power within the competence of the Opposition Division (which was responsible for the decision appealed) or remit the case to that department for further prosecution. It is thus at the Board's discretion whether it examines and decides the case or remits the case to the first instance.

However, any necessary fresh assessment of a case should normally be carried out by the first instance, as set forth in section 2.2 above. This is especially so when, as in the present case, having regard to the high degree of relevance of the belated citation (10), the maintenance of the patent in suit would be at risk. In such a situation, further examination should be undertaken by the Opposition Division so as to afford the parties two levels of jurisdiction, all the more so when, as in the present case, the Respondent has expressly asked for this.

5. Apportionment of costs

As set out in section 2.3 above, when late submittal of a document necessitates remittal of a case to the first instance, the costs of any oral proceedings in the appeal should normally be borne in toto by the responsible party.

In the present case, the reason given by the Appellant for the belated submission of document (10) was the relative difficulty of obtaining it by reason of its being a GDR patent and not, in consequence, being part of their normal manual search stock. The Board finds this reason plausible to some extent and is, therefore, prepared to accept it as a valid reason for departing from what should be the normal practice of awarding the whole of the costs of the oral proceedings in the appeal against the Appellant.

In exercising its discretion, the Board will order the Appellant to pay half of the Respondent's costs for the oral proceedings in the appeal.