4.10. Late submission of new arguments and lines of attack

In T 1875/15 the board followed the finding in T 1914/12 that a board has in principle no discretion not to admit late-filed arguments. However, it also noted that if a late-filed objection included new allegations of fact, the board had, under Art. 114(2) EPC, the discretion not to admit it into the proceedings. The board held that the respondent's objection under Art. 100(c) EPC, which had been raised for the first time during the oral proceedings before the board, included not only legal but also factual (and technical) considerations, namely what the term "poly"-olefin" in the passage concerned meant. The respondent's allegation that it had to be read as "poly-alphaolefin", such that the corresponding feature in claim 1 as granted was not based on the application as filed, was not an argument but rather an allegation of a fact, namely, the fact that the skilled person would have interpreted the term "poly"-olefin" in this passage of the application as filed as to directly and unambiguously mean "poly-alphaolefin". Therefore, the respondent's late-filed objection included a new allegation of fact. Thus, under Art. 114(2) EPC the board had the discretion not to admit the respondent's late-filed objection. The board held that this finding was in agreement with T 1914/12, according to which a "fact" had to be understood as a piece of (allegedly) factual information, on which a party based its case. The present case was also in line with decisions T 635/14 and T 1381/15, in which the entrusted boards also regarded late-filed objections as new allegations of fact.

The board in T 1914/12 held (contrary to T 1621/09) that the boards did not have any discretion when it came to the admissibility of late-filed arguments based on facts already in the proceedings. Invoking Art. 114 EPC, which in English referred to arguments (as well as to facts and evidence) in paragraph 1, but not in paragraph 2, it concluded that the discretion conferred by paragraph 2 did not extend to late-filed arguments and observed that this was in line with the pre-2011 case law (e.g. T 92/92, T 861/93, T 131/01, T 704/06, T 926/07 and T 1553/07). It noted that two decisions had been taken in September 2011 – T 1069/08 and T 1621/09 – in which that case law had been questioned on the basis of Art. 13(1) in conjunction with Art. 12(2) RPBA 2007 and it had been concluded that the boards did have some discretion when it came to late-filed arguments. However, it was unconvinced by the reasoning underlying these decisions. Their interpretation ignored the fact that Art. 114(2) EPC provided no justification for such discretion, as the older case law had held many times. In English at least, the EPC, and in particular Art. 114 EPC, treated facts and arguments differently. More specifically, Art. 114(2) EPC explicitly conferred discretion for late-filed facts but not for late-filed arguments based on facts already in the proceedings. In the board's view the RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not.

In T 47/18 the statement of grounds of appeal contained neither an objection of lack of clarity of the claims nor an objection under Art. 123(2) EPC. It contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections. The board referred to the established case law that new objections, which had not been raised in the statement of grounds of appeal, were considered an amendment to a party's case. Admission of such objections was at the discretion of the board pursuant to Art. 13(1) and/or 13(3) RPBA 2007 (T 996/15 for a new objection under Art. 84 EPC; T 682/11 for a new objection under Art. 123(3) EPC; T 1307/13 for a new objection regarding the validity of the priority claim). The board stated that, furthermore, the objections in question also did not merely constitute a new argument (T 1914/12, see above) because they went beyond submissions serving to underpin the facts, evidence and grounds filed in good time. Rather, they were based on new legal grounds (G 4/92, OJ EPO 1994,149 point 10 of the Reasons) that had not been addressed before in the appeal proceedings. The board pointed out that the appellant could have raised the objections in question at several instances in the proceedings before the opposition division. There was no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about two months before the oral proceedings before the board.

In T 603/14 the board exercised its discretion not to consider the late-filed objection of lack of inventive step in view of D1 and D3. The appellant raised this objection for the first time in the oral proceedings before the board. The documents formed part of the appeal proceedings. The board stated that the objection represented an amendment to the appellant's case and might as such, pursuant to Art. 13(1) RPBA 2007, be admitted and considered at its discretion. Document D1 and D3 had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step was to the board a new fact. The appellant did not present a convincing justification for the late submission of this alleged new fact. The board's preliminary opinion on the disclosure of D1 did not introduce any new aspects into the discussion. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the board. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party could not be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art; see also T 181/17.