June 2024 Preliminary Opinion Issued in R 4/24
Following G 2/21, the referring board in the case underpinning that referral (T 116/18) established a test based on the principles set out by the EPO’s Enlarged Board of Appeal for deciding whether to admit post-filed evidence into proceedings. The opponent then filed a petition for review of that decision, rendering it unclear whether the new test would be upheld or overturned. The Enlarged Board has now issued its preliminary opinion on that petition, which strongly suggests the test established by T 116/18 will be upheld and the petition dismissed.
Background
In our article of January 2024, we reported that the opponent in the case underpinning the “plausibility” referral (G 2/21) had filed a petition for review of the referring board’s decision (T 116/18) by the Enlarged Board of Appeal. That petition is currently being heard as case R 4/24.
If successful, the petition could result in the legal test established by T 116/18 for deciding whether to admit post-filed evidence into proceedings being overturned.
Those who have been following this case will recall that the opponent’s main arguments in support of its petition are (i) that the board denied the opponent its right to be heard by formulating and applying a new legal test without first giving the opponent an opportunity to comment on its accuracy, (ii) that the board’s test is flawed in view of the wording of order no. 2 of G 2/21, and (iii) that the board misunderstood several of the opponent’s arguments.
Preliminary Opinion
The Enlarged Board of Appeal has now issued its preliminary opinion as to the merits of the opponent’s petition. Whilst not a final decision, this offers a lot of insight into the decision the Enlarged Board is ultimately likely to reach.
In relation to the opponent’s first argument, the Enlarged Board notes that, prior to oral proceedings, the board of appeal issued a communication setting out two possible interpretations of order no. 2 of G 2/21 and indicating that it had not yet taken a position on which of these interpretations was correct. The Enlarged Board then notes that both parties filed written submissions in response to that communication and that oral proceedings were then held. It seems the Enlarged Board believes the issue of how to interpret order no. 2 of G 2/21 was adequately discussed with the parties and that the board had no obligation to tell them in advance of its written decision how it ultimately decided to apply G 2/21 in view of the arguments presented to it.
Turning to the opponent’s second argument, the Enlarged Board suggests that it believes the board fully considered the wording of order no. 2 of G 2/21, and thus that there is nothing to suggest the test formulated by the board is incorrect.
The Enlarged Board is additionally very dismissive of the opponent’s third argument, indicating that a failure to correctly understand the opponent’s arguments is not the same as denying the opponent an opportunity to present those arguments, and thus does not amount to a violation of the opponent’s right to be heard.
Conclusions
Taken together, the Enlarged Board’s preliminary opinion strongly suggests it is not satisfied by any of the opponent’s arguments, and thus that the petition for review will fail. In fact, the Enlarged Board describes the petition as “clearly unallowable”, which further supports this conclusion.
It therefore seems highly likely that the test set out in T 116/18 for deciding whether to admit post-filed evidence into proceedings will be upheld and applied by the EPO in the future.
These developments will be welcome news to those seeking clarity on how the principles set out in G 2/21 will be applied in practice.
