2.2.3 Principles relating to the exercise of discretion  

In exercising its discretion under Art. 114(2) and Rule 116(1) and (2), the division must assess all relevant factors of the case.

The division will in the first place have to consider the relevance of the late-filed facts or evidence (see E‑VI, 2) or the allowability of the late-filed amendments on a prima facie basis. If these facts or evidence are not prima facie relevant, i.e. if they do not appear to affect the outcome of the proceedings (T 320/15), or if these amendments are not clearly allowable (see H‑II, 2.7.1), they will not be admitted.

For instance, if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the division could, in principle, treat such requests as late-filed and apply the criterion of "clear allowability" (see H‑II, 2.7.1) in judging whether they can be admitted into the proceedings. However, the division will consider admitting such requests into the proceedings if they relate to the subject-matter of dependent claims as granted.

Convergence of requests is another of the relevant factors that the division may consider when exercising its discretion (for a definition of convergence, see H‑III, 3.3.2.2).

For the purpose of admissibility, a late-filed document's relevance is normally decided relative to the amended claims against which it is cited. Documents that have limited relevance to an initial set of claims may acquire new relevance as a result of subsequent amendments to those claims (T 366/11).

Before admitting these submissions, the division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with the new facts or evidence or the proposed amendments.

As regards procedural expediency, where the late-filed facts or evidence are relevant but their introduction would cause a prolonged adjournment of the proceedings, the division may decide not to admit these facts or evidence in the proceedings. An example would be where the witness still has to be found or lengthy tests are still necessary. The division may, however, also postpone the proceedings and in doing so may have to consider the apportionment of costs in opposition proceedings (Art. 104). Similarly, if late-filed requests are based on subject-matter not previously covered by the claims, they will normally not be admitted into the proceedings also for reasons of procedural efficiency. Admission of such requests could give rise to a postponement of oral proceedings and to a decision on apportionment of costs.

Examples of possible abuse of the proceedings would be:

– The patent proprietor introduces at short notice a proliferation of auxiliary requests which are not a reaction to the course of the proceedings. 

– The opponent knowingly abstains from raising an assertion of public prior use based on its own activities until late in the proceedings, even though the evidence in its support had become fully available earlier (see T 534/89).

– The applicant or patent proprietor presents a large number of requests or incomplete variants of requests and invites the division to choose, shifting the responsibility for determining the content of the application or patent to the division. It is the duty of any party to proceedings to make its own case and to formulate its own requests (see T 446/00).

Concerning the question of whether the parties can reasonably be expected to familiarise themselves in the time available with the new facts or evidence or the proposed amendments:

– It may only become apparent in the oral proceedings that the pending request submitted to overcome grounds for opposition is not allowable under the EPC. The opponent must always expect to have to discuss subject-matter based on dependent claims as granted if they are reasonable in number. 

– The proprietor is in principle free to withdraw previously submitted amendments and defend the patent as granted unless this would constitute an abuse of the proceedings.