EPO appeals - admission of late-filed documents
03 February 2017
In the recent decision T971/11, a European Patent Office (EPO) Appeal Board held that it does have the discretion to admit a late-filed document even though the Opposition Division had exercised its discretion not to admit the document.
The EPO has the discretion to disregard facts or evidence which are not submitted in due time (Article 114(2) EPC). Case law has established that late-filed documents should only be admitted into proceedings if, on first impression, there are reasons to suspect that the late-filed document prejudices the maintenance of the patent.
Appeals before the EPO have, in recent years, become a review of the decision of the first-instance and not a re-hearing of all the facts and circumstances of the case.
Under procedural rules (known as RPBA), an Appeal Board can disregard submissions which were not admitted because they were filed late in the first-instance proceedings (Article 12(4) RPBA). In addition, consideration is unlikely to be given to new submissions that should have been presented in the first-instance proceedings (Article 12(4) RPBA). Appeal Boards should only overrule the way in which a department of the first-instance exercised its discretion if it considers that the department of first-instance applied wrong principles or did not take into account the right principles or it acted in an unreasonable way.
In T2102/08 it was held that if an Opposition Division found a document to be inadmissible by a correct discretionary decision then the document should not be admitted into the Appeal proceedings.
Consequently, opponents have been presented with a dilemma as to whether they should (i) file a document shortly before or during oral proceedings but risk the document being permanently excluded from proceedings because the department of first-instance consider it inadmissible or (ii) hold back the document for an appeal but risk that it could be held inadmissible because it could have been filed earlier.
During opposition proceedings prior to the appeal (T971/11), the opponent filed a document just two days before oral proceedings. The Opposition Division considered that the document was late-filed and it failed to disclose or render the claims obvious. Using its discretion, the Opposition Division did not admit the document because it was not, on first impression, relevant. This document was resubmitted at the start of the appeal proceedings.
In the decision T971/11, the Appeal Board held that there was no reason to overrule the way in which the department of first-instance had exercised its discretion. The board went on to state that it did not, however, fully share the view of T2102/08; if a document which would have been admitted into the appeal proceedings if it had been filed for the first time at the outset of those proceedings should not be held inadmissible for the sole reason that it had been filed before the department of first-instance and not admitted. In addition, the board held that to impose such a limitation on discretion could have the undesirable effect of encouraging a party to hold back a document during the opposition proceedings only to present it at the appeal stage.
The Appeal Board considered that the document was filed by the opponent in reaction to developments in the last phase of the opposition proceedings and was an attempt to fill the gap. The fact that it had been filed shortly before oral proceedings before the Opposition Division instead of holding it back for the Appeal stage was not detrimental to procedural economy nor a disadvantage to the other party or board.
Thus, the Appeal Board admitted the document into the proceedings.
The criteria for the admissibility of late-filed documents before the Appeal Board are the same as those during the first-instance proceedings.
Your chances of getting a late-filed document admitted are improved if, in the light of T971/11, you can show an Appeal Board that there are facts and circumstances beyond those at the time when the department of first-instance considered the admissibility of a late-filed document.
Full decision (PDF) T971/11: http://dycip.com/appealt97111