4. Late submissions
4.3. Concept of "in due time"
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The discretionary power pursuant to Art. 114(2) EPC applies to facts and evidence filed late (see e.g. T 502/98, T 986/08, T 66/14). What is meant by "in due time" for the purposes of Art. 114(2) EPC requires interpretation.
The parties in inter partes cases are subject to a particular duty to facilitate due and swift conduct of the proceedings, in particular by submitting all relevant facts, evidence, arguments and requests as early and completely as possible. This duty is reflected in the EPC provisions governing the handling of late submissions: Art. 114(2) EPC as a general provision; R. 137 EPC for the grant procedure; and R. 76(2)(c) and R. 80 EPC for the opposition procedure; R. 116(1) EPC concerning the final date for making written submissions in preparation for oral proceedings (for appeal proceedings, see the Rules of Procedure of the Boards of Appeal; see chapter V.A.1.2. below).
The boards have stressed that opponents are required to submit all their objections during the opposition period, setting each out in full (T 117/86, OJ 1989, 401). Under R. 76(2)(c) EPC, the notice of opposition must contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds.
Notwithstanding the above, according to the case law of the boards of appeal, not only the facts and the evidence submitted by the opponent within the nine-month period to file an opposition and those possibly submitted by the patent proprietor within the four months given for replying to the grounds of oppositions are "filed in due time". The filing of facts and evidence within subsequent periods of time may also be in "due time" when it occurs in accordance with the principle of procedural economy and, therefore, when the filing party has observed a fair degree of procedural vigilance (T 502/98 referring to T 201/92, T 238/92, T 532/95 and T 389/95; see also e.g. T 574/02).
Accordingly, new facts, documents and/or evidence are regarded as having been filed on time if their filing was occasioned by an argument or a point raised by another party so that, under the circumstances of the case, they could not have been filed earlier. According to T 502/98 this may occur, for instance, when certain facts or evidence became relevant only after a party has submitted an unforeseeable amendment of the claims or a new experimental test report or has challenged for the first time the existence of common general knowledge. In such cases, a diligent party normally has no obligation to retrieve and file such facts and evidence before such action of the other party (cited e.g. in T 986/08). See also T 623/93, where the board held that, where amended claims were introduced in the opposition proceedings there could be no objection to the opponent's submitting new citations and new arguments against the new claims (with reference to G 9/91, OJ 1993, 408, point 19 of the Reasons).
Therefore, the filing of new facts and evidence in direct response to new submissions by the other party (T 389/95, T 320/08, T 1698/08, T 1949/09), or at the earliest time possible in the proceedings (T 468/99, T 2551/16), or promptly after their relevance has become apparent (T 201/92, T 502/98, T 568/02, T 574/02, T 986/08), has been considered to be "in due time" (see also T 156/84, OJ 1988, 372, but also e.g. T 1734/08 and T 733/11, which considered submissions filed outside the period specified by Art. 99(1) EPC to be late-filed, without considering the observance of procedural vigilance).
In T 117/02 the board stated that in the case of a request to introduce late-filed submissions (here: a new ground of opposition and new arguments and evidence) the right to be heard should be granted before those late-filed submissions were rejected. In summary, an opponent must be given an opportunity to respond in an appropriate way when the subject of the proceedings has changed, for example due to amendment. Depending on the nature of the amendment this may involve the filing of further documents (T 366/11).
In T 2165/10, the board shared the respondent's view that the appellant (opponent) should have included an indication of the alleged public prior use submitted later in its notice of opposition and indicated/filed all evidence in its possession at that time. It did not accept the appellant's argument that the documents in its possession at the time of filing the opposition were considered by the appellant not to be enough to constitute a complete chain of evidence.
In T 628/14 the board recalled that, according to the established case law, R. 116(1) EPC should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded as established with the notice of opposition. Also, the fact that the opposition division expressed a preliminary opinion in its communication did not necessarily justify the filing of new evidence, unless this was in reaction to new aspects raised in the communication.
The board in T 66/14 observed that, according to case law, evidence first submitted by an opponent after expiry of the nine-month period under Art. 99(1) EPC was generally to be regarded as late for the purposes of Art. 114(2) EPC, and that R. 116(1), fourth sentence, EPC was not to be understood to mean that a fresh period during which new evidence could be filed without being treated as late was triggered on issue of the summons to oral proceedings (T 841/08). However, there may be cases in which special circumstances justify an opponent's not filing evidence until after the nine-month period under Art. 99(1) EPC and in which, therefore, that evidence is not to be treated as late for the purposes of Art. 114(2) EPC (T 532/95). In particular, new evidence submitted after the date referred to in R. 116(1) EPC is to be admitted if the subject of the proceedings has changed.
- T 2734/16
1. Eine neue Angriffslinie auf die erfinderische Tätigkeit, die als Reaktion und unter Verwendung der von der Patentinhaberin mit der Einspruchserwiderung eingereichten Dokumente verfolgt wird, ist nicht per se als verspätet anzusehen. Sie kann aus Gründen der Waffengleichheit in das Einspruchsverfahren zugelassen werden, auch wenn die Dokumente im Ergebnis nicht relevanter als andere Dokumente sind (Siehe Punkt 1.4.1).
2. Das späte Einreichen von zufällig bekannt gewordenen Entgegenhaltungen ist nicht schon allein deswegen zulässig, weil sie in der japanischen Sprache verfasst sind und deren Auffindbarkeit deswegen unter Umständen erschwert gewesen sein mag. Dies gilt umso mehr, wenn dem Einreichenden die Bedeutung japanischer Unternehmen auf dem fraglichen technischen Gebiet bekannt war und deshalb Veranlassung zu rechtzeitigen umfassenden Recherchen bestand (Siehe Punkt 1.4.2).
- T 1551/14
Legitime Reaktionen auf die Änderung der Verfahrenslage (hier: Einreichung einer eidesstattlichen Erklärung nach Einreichung eines neuen Hilfsantrags) sind grundsätzlich zuzulassen. Der Einwand, dass sie zum bisherigen Vortrag im Widerspruch stehen, kann eine Nichtzulassung in der Regel nicht rechtfertigen (siehe Punkt 3.2 der Gründe). Zurückverweisung mit der Auflage, die Zeugeneinvernahme fortzusetzen, ggf. unter Eid vor einem nationalen Gericht (siehe Punkte 8.5 und 9 der Gründe).
- Case law 2020
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In T 2734/16 the board held that a new line of attack on inventive step pursued in response to and using the documents submitted by the patent proprietor with its reply to the opposition should not be considered late filed per se. For reasons of "equality of arms", the new attack could be admitted into the opposition proceedings even if the documents ultimately proved no more relevant than other documents. In the case in hand, the patent proprietor had asserted that the large-scale road milling machines illustrated by the examples in the documents submitted with its reply to the opposition formed the closest prior art. In these circumstances, the appellant had to be entitled, with a view to ensuring equality of arms, to take the facts first brought to its attention by the new documents submitted by the opposing party and use them for its own ends in a counterattack relying on them as new arguments against inventive step. Since this counterattack had only become possible once the respondent had submitted these documents in its own defence, the board, having considered all the circumstances, did not deem it appropriate to refuse the new line of attack on the grounds of late filing and irrelevance of the documents on which it was based. See also under chapter V.A.6.4 "State of proceedings – procedural economy – RPBA 2007".
- Case law 2019
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In T 1551/14, during the written proceedings that followed initial oral proceedings before the opposition division, at which four witnesses had been heard, the patent proprietor had filed a new auxiliary request limiting the subject-matter of the two independent claims by a new feature. Having been summoned to a second round of oral proceedings, the opponent had filed, within the period fixed under R. 116 EPC, a statutory declaration made by one of the previously heard witnesses and proposed that that witness be heard again. The opposition division had decided not to re-examine the witness and not to admit his statutory declaration. For the board, however, the declaration, which dealt with matters that had become relevant only once the new auxiliary request had been filed, was a direct reaction, submitted within the available time, of the opponent (appellant) to that request, and therefore could not be treated as filed late. In deciding not to admit it despite having admitted the auxiliary request, the opposition division had denied the opponent its right to be heard and so committed a procedural violation. The board did not share the appellant-proprietor's misgivings that the declaration conflicted with the case made so far. That submissions filed as a legitimate reaction to an amendment to the counter-party's case contained contradictions was in any event not a proper basis for refusing to admit those submissions from the outset. The board nevertheless observed that several statements made in the declaration were worded in precisely the same way as the new auxiliary request. Given that the points the witness had made were relevant for assessing patentability but supported only by his declaration, the question of his credibility was crucial. That question could be settled only by hearing him again, if necessary under oath before a national court (R. 119 and 120(2) EPC). The board therefore remitted the case to the opposition division for further prosecution with an order that it continue taking evidence by hearing the witness concerned.