Whether a document is admitted to proceedings before the European Patent Office (EPO) can often be a highly contested and charged matter. This is because proceedings can hinge on conclusions drawn from a particular document and thus a case can turn on whether a document is admitted to proceedings.
Once a document is admitted, however, it can then be reviewed and utilised by all parties to the proceedings from that point in proceedings onwards – or can it? The short answer is yes, but this question was tested in decision T1206/19 (Spatial Filterbank/OTICON). This decision addressed the question of whether a document, admitted by the Opposition Division, can be “unadmitted” by the Board of Appeal.
This case concerned an appeal from a decision of the Opposition Division to maintain an opposed patent in amended form (European Patent No. EP2876903). During the Opposition Proceedings the Opponent filed prior-art document D17 in response to the Patentee’s reply to the Notice of Opposition and the Summons to Oral Proceedings. The proprietor argued that D17 should not be admitted into the Opposition Proceedings because similar information was provided by document D15, which was filed by the Patentee, and accordingly D17 was not prima facie relevant. Furthermore, D17 was not directed to a hearing aid, which is the subject matter of the opposed patent. Nevertheless, the Opposition Division decided to admit D17.
Thus when this matter reached the Boards of Appeal of the EPO (BoA) the Patentee argued that D17 should not have been admitted to the proceedings and that the Opposition Division incorrectly exercised their discretion in admitting it. Accordingly, the Patentee requested that D17 be “unadmitted” from the appeal proceedings.
However, the BoA reviewed the course of the opposition proceedings and found that there were good reasons to file document D17 because the Opposition Division did not concur with the Opponent’s arguments.
Concerning the similarity between D15 and D17, it was noted by the BoA that the title of D15 refers to an a posteriori speech presence probability estimation but document D17 was not limited or narrowed by the use of such a title. Accordingly, the Board concluded that the Opposition Division had correctly exercised its discretion to admit D17 (cf paragraph 2.3 of the Appeal Decision) and had not committed any procedural violation in admitting the document, let alone a substantial one.
Accordingly, the Board of Appeal could see no reason to “unadmit a document that had already been admitted by the first-instance department without the first-instance department having committed a substantial procedural violation in that regard.” We would also note that should a substantial procedural violation have been committed under these circumstances then normally this would lead to direct remittal of the case.
In any case the Board in this case referred to decision T 39/93 (cf Reasons 3.1.1, second paragraph), to note that no valid judgement on the merits of a decision by a department of first instance could be made if evidence that was admitted by the first-instance department could simply be “unadmitted” by a later Appeal Board.
This would appear to be a reasonable position given that the basis of a decision by a department of first instance could be significantly altered by removing certain documents from the file, and cause the appeal to relate to an entirely different set of facts. Such a situation would appear to be nonsensical. In contrast the decision not to unadmit D17 appears entirely sensible.