Following an appeal by both the patentee (Eli Lilly) and the opponent (Dr Armin K. Bohman), the Board of Appeal of the European Patent Office has, in T0156/15, raised important points regarding the completeness of a party's case and the requirement for fairness to both parties in the proceedings, as well as the nature of admissible expert evidence.
Late-filed submissions
The patentee filed expert evidence less than two weeks before
oral proceedings before the Board, in response to a preliminary
opinion of the Board. One (D42) was a technical declaration, while
the other (D43) was an opinion of a former member of both the
Technical Board of Appeal and the Enlarged Board of Appeal. In
particular, the opinion D43 centred on whether the claims of the
patent under appeal recited subject matter which extended beyond
the content of the parent application as filed.
The patentee argued that this evidence was filed in response to the
Board's preliminary opinion which was not in the patentee's
favour. The patentee argued that it had been surprised by this
preliminary opinion, which contradicted the opinion of the
Opposition Division, and, therefore, it was only after receipt of
the Board's preliminary opinion that it was able to respond to
this new assessment of the claims.
However, the Board held that the patentee should not have been
surprised that the Board disagreed with the Opposition Division. In
particular, the opponent had appealed the decision of the
Opposition Division. Thus, as the Board pointed out, if a decision
is appealed, there is every possibility that the Board will
disagree with the appealed decision. The patentee should,
therefore, have considered such a possibility, and should have
planned its strategy accordingly.
With regard to the technical declaration (D42), the Board
considered that it set out a large number of facts and assertions
which the opponent would need time to respond to. The Board
considered that the opponent would not have sufficient time to
respond without an adjournment (as D42 and D43 were filed less than
two weeks before oral proceedings), but that an adjournment would
be contrary to the principle of procedural economy (and had also
not been requested). Thus, D42 was not admitted.
With regard to the opinion of the former member of the Technical
Board of Appeal and of the Enlarged Board of Appeal (D43, the Board
pointed out that expert evidence was intended to assist the Board
in matters which lie outside their technical expertise. However,
the assessment of whether the claims recite subject matter
extending beyond the content of the parent application as filed is
entirely within the expertise of the Board of Appeal. The Board
also considered that, if it were swayed by D43, it would be lending
undue weight to the individual making the argument, rather than
focus on the argument itself. Thus, D43 was also not admitted.
Late-filed requests
Auxiliary Requests 19 and 20 were filed during oral proceedings
before the Board. In particular, Auxiliary Request 19 was filed
only after the Board had announced the results of its deliberations
on the Main Request and the preceding Auxiliary Requests, and
Auxiliary Request 20 was filed only after the Board had announced
the result of its deliberations on Auxiliary Request 19.
As a general point, the Board held that the "reactive
approach" of the patentee was a fundamental flaw because it is
incompatible with the judicial nature of appeal proceedings. In
particular, all parties to the proceedings have a right to know
from the start of proceedings the essential aspects of the case
they have to meet, and the Board pointed out that the Rules of
Procedure for the Boards of Appeal (Article 12(2)) requires the
statement of grounds for appeal to set out the party's complete
case. Although the Board has discretion to admit late-filed facts,
evidence and requests, the Board held that the overarching
consideration when exercising discretion must always be that the
proceedings are fair. The Board considered that, when a party
reacts mainly to the communications or opinions of the Board,
rather than to the submissions of the other party, it seeks an
unfair advantage over the other party.
Referring to Auxiliary Requests 19 and 20 specifically, the Board
held that these Requests were not admissible: firstly because they
did not, prima facie, overcome the objections that they were
directed towards and they raised new issues which needed to be
considered; secondly, because the Board held that they were filed
to allow the patentee to adjust its strategy in view of the
Board's deliberations during oral proceedings. The timing of
the filing of these Auxiliary Requests meant that it was difficult
for the opponent to react, thereby providing an unfair advantage to
the patentee. The Board held that this was hard to reconcile with
the principle of fairness of the procedure, and commented that this
reason alone would have been enough to refuse admission even
without considering whether the Auxiliary Requests overcame the
deficiencies noted in the preceding Auxiliary Requests.
Summary
This decision highlights several points. First, that an
appellant's case must be as complete as possible at the time of
filing the statement of grounds of appeal, and parties should, from
the outset of the appeal, consider the possibility that the Board
of Appeal might not agree with the first instance decision.
Second, parties should act in a way which is fair towards the
opposing parties. In particular, this means that parties should not
act in a manner which is reactive only to the Board's opinions
but, rather, should act in a manner which is reactive to the other
party's submissions.
Finally, parties should be careful that expert evidence provides
guidance only on issues which are not within the expertise of the
Board of Appeal.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.