IP Cases & Articles

T 2026/15: admissibility of documentation on appeal

T2026/15 concerns the question of admissibility of a document, particularly when moving from a department of first instance to the Board of Appeal.

In this case, the applicant had filed a main request and a first auxiliary request in response to the summons to oral proceedings before the examining division. The examining division refused to admit the first auxiliary request under Article 137(3), which allows the examining division to refuse to give their consent to an amendment made after a response to a Rule 70a or Rule 161 communication has been made.

In this case, however, the examining division provided multiple pages of arguments as to why the first auxiliary request could not be admitted – addressing issues such as clarity.

During appeal, the applicant insisted that the Board of Appeal consider the first auxiliary request. The Board of Appeal agreed. Moreover the Board of Appeal stated that the examining division had clearly taken the first auxiliary request into account despite saying that it was “not admitted”. In particular, the document had been thoroughly analysed, with only two of the reasons made by the examining division having been made “prima facie”. The first auxiliary request had therefore been implicitly considered. Indeed, the Board of Appeal noted that only after a request has been admitted can it be considered on its merits. In contrast, this is not the case where admission is refused because refusal to admit is carried out in order to bring examination to a close.

According to the Rules of Procedure of the Board of Appeal (RPBA), the Board of Appeal must take into account everything presented with the grounds of appeal, but do have the power to hold inadmissible as anything that was not admitted in the first instance.

Therefore, in this case, with the first auxiliary request having been implicitly admitted, the Board of Appeal was in fact obliged to consider the first auxiliary request. The rules permitting them to hold the first auxiliary request inadmissible were not applicable.

The Board of Appeal also noted that it was undesirable for the examining division to have control over the applicant’s options for appeal, and thus it was not desirable for an examining division to be able to actively prevent the Board of Appeal from considering a request. Furthermore, the Board of Appeal noted that the end result of whether the examining division had refused to admit the request or whether they had (as the Board decided) implicitly admitted the request, but refused it, were the same – the request was not granted. Therefore, there was nothing to be gained by depriving the applicant of the opportunity to appeal and put forward the first auxiliary request.

This latter point is good news for applicants, who want the best chance to try and get an application granted.

In particular, this latter statement from the Board of Appeal is encouraging as it suggests that Boards of Appeal may be dissuaded from wanting to deprive applicants of having every chance to get an application granted.

It is also clear that simply because the examining division says that a document is not admitted does not necessarily make it so. One must instead consider the examining division’s approach to the document and consider whether it has been analysed in substance (leading to an implicit admission of the document, despite any declaration to the contrary).

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