4.3.3 Fair response – examples

In T 1551/14, during the written proceedings that followed initial oral proceedings before the opposition division, at which witnesses had been heard, the patent proprietor had filed a new auxiliary request limiting the subject-matter of the 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. For the board, this declaration, which dealt with matters that had become relevant only once the new auxiliary request had been filed, was a direct and timely reaction of the opponent (appellant) to that request, and therefore could not be treated as filed late. 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.

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 T 1711/16 the opponent had filed further evidence within the final date set in accordance with R. 116(1) EPC in order to overcome concerns expressed by the opposition division for the first time in its communication sent out in preparation for the oral proceedings. The board pointed out that the prima facie relevance of these documents, which in the proprietor's opinion was lacking, was irrelevant to the issue of admittance. The decisive point was whether these documents and the submissions made in respect of them dealt with the concerns of the opposition division and were timely submitted, i.e. whether they represented a fair answer to the concerns raised by the opposition division. Accordingly, the board overturned the opposition division's discretionary decision division not to admit the evidence at issue.