4.5. Criteria for exercise of discretion
4.5.1 Different approaches
It is at the opposition division's discretion whether to admit late-filed documents (Art. 114(2) EPC; see chapter IV.C.4.1. above). According to settled case law, it must first examine them as to their relevance. Late-filed facts and evidence and supporting arguments should only exceptionally be admitted into the proceedings if, prima facie, there are reasons to suspect that such late-filed documents prejudice the maintenance of the European patent in suit (see, in particular, T 1002/92, OJ 1995, 605; see also T 1643/11, T 2443/12; and in this chapter IV.C.4.5.3 "Prima facie relevance").
As to whether and, if so, to what extent opposition divisions can or must consider other criteria too, with the result that even prima facie relevant documents may not be admitted in certain cases, the boards have taken various different approaches.
According to one of those approaches, the principle of examination by the EPO of its own motion (Art. 114(1) EPC) takes precedence over the possibility of disregarding facts or evidence not submitted in due time. This follows from the EPO's duty towards the public not to grant or maintain patents which it is convinced are legally invalid (T 156/84, OJ 1988, 372; T 2542/10; T 1272/12). Accordingly, the main criterion for deciding on the admissibility of late-filed documents and evidence is their relevance, i.e. whether they are decisive (relevant) for the outcome of the case (see T 258/84, OJ 1987, 119; T 892/98; T 605/99, T 572/14). Some decisions assess the relevance in relation to other documents already in the case (e.g. T 932/99, T 482/01, T 927/04; see however T 1652/08 and T 66/14 rejecting this definition). If the document is relevant it must be admitted into the case and taken into account (T 164/89, T 1016/93).
In addition, in landmark decision T 1002/92 (OJ 1995, 605) the board held that the principles set out by the Enlarged Board in G 9/91 and G 10/91 (OJ 1993, 408 and 420) with regard to the admissibility of fresh grounds of opposition (see chapter IV.C.3. above) are also generally applicable to late-filed new facts and evidence in support of grounds of opposition already presented in the notice of opposition. Accordingly, in proceedings before the opposition divisions, late-filed facts, evidence and related arguments which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to R. 55(c) EPC 1973 should only exceptionally be admitted into the proceedings if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent in suit. The board saw the consideration of relevance as the principal factor governing the exceptional admissibility of late filed new facts, evidence and related arguments in proceedings before the opposition division. For the more restrictive and stringent criteria in proceedings before the boards of appeal, see chapter V.A.4. and, in particular, chapters V.A.4.4.6d) and V.A.4.4.6e), V.A.4.5.8i) and V.A.4.5.11b) below.
Many decisions have affirmed T 1002/92 (for late submissions in opposition proceedings see e.g. T 481/99, T 481/00, T 1643/11, T 1883/12, T 2438/13, T 710/15). In T 2049/16 the board reiterated that the need to avoid the maintenance of invalid European patents justified, in first-instance proceedings, the admittance of documents that, in the opposition division's view, were prima facie relevant.
However, in many earlier decisions, too, the relevance of late-filed documents was no longer viewed as being the only decisive criterion for admitting them. Other criteria, such as how late the documents were, why they had been submitted late and whether their submission constituted a procedural abuse or whether admitting the late-filed documents could lead to an excessive delay in the proceedings, were also held to be decisive (see T 534/89, OJ 1994, 464; T 17/91, T 951/91, OJ 1995, 202; T 1019/92, T 481/99, T 1182/01, T 927/04, T 1029/05, T 1485/08, T 2542/10, T 1272/12, T 1883/12, T 1271/13).
For decisions on the exercise of discretion by opposition divisions, see in this chapter IV.C.4.5.3 to 4.5.5; for criteria for considering late-filed facts and evidence in appeal proceedings, see chapter V.A.4. and, in particular, chapters V.A.4.1.2, V.A.4.4.6, V.A.4.5.7, V.A.4.5.8 and V.A.4.5.11.
- T 1445/22
Abstract
In T 1445/22 the appellant requested the admittance into the appeal proceedings of late-filed documents D10 to D12, D14, D15 and D20, which had not been admitted into the opposition proceedings for being prima facie not relevant with respect to the sufficiency of disclosure objection, as well as D26 and D27 filed with the statement of grounds of appeal.
The board first examined Art. 12(6), first sentence, RPBA and noted that evidence submitted by an opponent after the expiry of the nine-month period according to Art. 99(1) EPC was generally to be regarded as late-filed. Exceptions to this rule were where such evidence could not have been filed earlier, for example where the subject of the proceedings had changed. This was typically the case where new claim requests were filed such that there was no reason to file the evidence in response thereto any earlier or where the opposition division had raised a new issue.
In the case in hand the opposition division had not raised any new aspects in its preliminary opinion, but rather reiterated the position, given by the respondent (patent proprietor) in its reply to the notice of opposition. The board found therefore that there had been no change in the subject of the proceedings before the opposition division which would have led to new evidence being considered to be timely filed.
The board also did not consider the circumstances leading to the obtainment of the evidence by the party filing it as relevant for the issue of whether a document was filed in due time. These circumstances were external to the proceedings and it would run counter to the concept of discretionary power if that discretion were denied to a deciding body by circumstances external to the proceedings. Were such discretion to be denied, then all documents created or coming to light at any stage of the proceedings that were filed by a party would automatically be part of the proceedings. However, this would undermine the nine-month period under Art. 99(1) EPC which aims to establish the factual and legal framework within which the substantive examination of the opposition is, in principle, conducted, allowing the patent proprietor a fair chance to consider its position at an early stage of the proceedings (see G 10/91, point 6 of the Reasons, and T 1002/92). Therefore, documents D10 to D12, D14, D15 and D20 had not been filed in due time and the opposition division had the discretion, under Art. 114(2) EPC, not to admit them.
The appellant (opponent) argued that it had not been given the opportunity to present detailed arguments based on documents D10 to D12, D14, D15 and D20, as only prima facie relevance had been discussed before the opposition division. The board found, however, that the appellant had in fact had the opportunity to present its arguments relating to the admittance and prima facie relevance of those documents during the opposition proceedings. It also noted it was established case law that a board of appeal should only overrule the way an opposition division exercised its discretion if it did so according to the wrong principles, not taking into account the right principles or in an unreasonable way. It was, therefore, not the function of a board of appeal to review all the facts and circumstances of the case to decide whether it would have exercised its discretion in the same way or not. In the case in hand the opposition division had regarded D10 to D12 as representing common general knowledge which did not need to be supported, and it could not see the relevance of D14, D15 or D20 for supporting the objection to insufficiency of disclosure. Thus, the opposition division had considered these documents as prima facie not relevant and had exercised its discretion reasonably, according to the right principles, after hearing both parties.
In its statement of grounds of appeal, the appellant had further requested that documents D10 to D12, D14, D15 and D20 be admitted into the appeal proceedings with respect to the appellant's lack of inventive step objections. The board decided to exercise its discretion under Art. 114(2) EPC and Art. 12(4) RPBA and not admit these documents into the appeal proceedings as none of the documents were suitable to address the issues which led to the decision under appeal.
In addition, the board found that there was no change in the opposition proceedings or particular circumstances in the present case which necessitated the filing of documents D26 and D27 for the first time in the appeal proceedings. D26 and D27 could and should have been filed during the opposition period. Therefore, the board did not admit them into the appeal proceedings (Art. 12(6), second sentence, RPBA and Art. 12(4) RPBA).