4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In T 291/21, the respondent (patent proprietor) submitted a test report with the reply. The board considered this report to be a reaction to the specific objections raised against the examples of the patent for the first time just before the oral proceedings before the opposition division. Since the report had been submitted so close to the date of the oral proceedings, the patent proprietor realistically would not have been able to carry out more comparative tests. Moreover, the opposition division's preliminary opinion regarding inventive step had been positive. The board also considered that the content of the submitted tests did not go beyond the scope defined in the patent, so the tests were admitted (Art. 12(4) and (6) RPBA 2020).
Similarly, in T 802/20 the appellant (patent proprietor) filed the experimental report D22 with the statement of grounds of appeal in order to show the presence of a technical effect over the closest prior art. The board admitted the report under Art. 12(4) and (6) RPBA 2020 for the following reasons. The auxiliary request at issue (main request in appeal) had been filed shortly before the final date under R. 116 EPC, the corresponding objection of lack of inventive step only shortly before the oral proceedings. In the board’s view, the appellant had not been in a position to timely react to this objection before the oral proceedings. Filing D22 with the statement of grounds of appeal could therefore be seen as having been made at the earliest opportunity.