CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1445/22 – R 116(1) is not an invitation for the opponent to file new evidence and arguments

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EP 3 309 133 B1 results from a divisional application of EP 14790542/EP  3 057 909 and relates to man-made vitreous fibres.

Brief outline of the case

The opposition has been rejected and the opponent appealed.

The board confirmed the rejection of the opposition.

The case is interesting as it deals with evidence filed by the opponent before the OD, within the time limit under R 116(1) before the OD.

The opponent’s requests

The opponent requested the admittance in appeal of D10 to D12, D14, D15 and D20, which had not been admitted by the OD.

The opponent argued that the documents were not late-filed as they were timely filed as a direct response to the OD’s preliminary opinion and the proprietor’s submissions.

The opponent referred in its statement of grounds of appeal to the OD’s preliminary opinion, and argued that as the OD stated in the preliminary opinion that the opponent had the burden of proof with respect to sufficiency of disclosure

For the opponent, the documents filed in response to discharge this burden should have been admitted.

In addition, the opponent argued that D14 could not be considered to be late-filed as it only became publicly available after the opposition period had ended.

The opponent also 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 was discussed before the opposition division.

The board’s decision

The board noted that in fact, D14 was provided by the proprietor in the opposition case against the parent patent EP 3 057 909 B1.

With respect to documents D10 to D12, D14, D15 and D20, the board further noted that according to Art 12(6) RPBA, evidence which was not admitted in the proceedings leading to the decision under appeal, should not be admitted by the board, unless the decision not to admit it suffered from an error in the use of discretion or unless the circumstances of the appeal case justifies its admittance.

The board reminded that it is established case law that R 116(1) is not to be regarded as an invitation to file new evidence.

Evidence submitted by an opponent after the expiry of the nine-month period according to Art 99(1) EPC is generally to be regarded as late-filed.

Exceptions to this rule are where such evidence could not have been filed earlier, for example where the subject of the proceedings has changed. This is typically the case where new claim requests are filed such that there was no reason to file the evidence in response thereto any earlier or where the opposition division raised a new issue. The board referred to the Case Law of the Boards of Appeal, 10th edition 2022, IV.C.4.3..

The OD did not raise any new aspects in its preliminary opinion, but rather re-iterated the position, given by the opponent in its reply to the notice of, that an opponent bears the burden of proof when raising a lack of sufficiency objection, CLB, supra, III.G.5.1.2 c) but that the opponent had not provided any verifiable facts substantiating its argumentation in its notice of opposition.

There was therefore no change in the subject of the proceedings before the OD which would have led to new evidence being considered to be timely filed.

The board did not consider the circumstances leading to the obtaining of the evidence by the party filing it as relevant for the issue of whether a document was filed in due time.

These circumstances are 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 are filed by a party would automatically be part of the proceedings.

This would clearly undermine the nine-month period under Art 99(1) which aims to establish the factual and legal framework within which the substantive examination of the opposition is, in principle, conducted, allowing the proprietor a fair chance to consider its position at an early stage of the proceedings, cf. see G 10/91, Reasons 6. and T 1002/92, Reasons 3.3.

Therefore, it appears that documents D10 to D12, D14, D15 and D20 were not filed in due time and the OD had the discretion, under Art 114(2), not to admit these documents.

When exercising its discretion to admit, or not admit, late-filed evidence, an OD must give both parties the opportunity to be heard on this point, cf. CLB, supra, IV.C.4.3.1, penultimate paragraph.

The OD exercises its discretion based on known criteria, a decisive criterion being the prima facie relevance of the evidence. This must be ascertained based on a first impression of the facts, with little investigative effort, reflecting the need for procedural economy in considering late-filed documents, cf. CLB, supra, IV.C.4.3.1, second paragraph; IV.C.4.5.3 a), first paragraph.

It is not intended, when assessing prima facie relevance, that the OD hears the full cases of the parties with respect to late-filed evidence, indeed this might lead to a de facto admittance of the documents, irrespective of the opposition division’s decision on admittance, cf. CLB, supra, IV.C.4.5.3 a), fourth paragraph.

It is therefore sufficient that the OD gave both parties the opportunity to discuss the admittance and the prima facie relevance of the late-filed evidence.

According to the minutes of the OD before the opposition division, the admittance of documents D10 to D20 was discussed with respect to the objection of lack of sufficiency of disclosure and the admittance of documents D16 to D19 was discussed with respect to the objection of lack of inventive step. According to both parties’ submissions before the board, the opponent had the opportunity to present its arguments relating to the admittance and prima facie relevance of the documents during the opposition proceedings.

As also argued by the proprietor, it is established case law that a board of appeal should only overrule the way an OD 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 is, 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, cf. see CLB, supra, IV.C.4.5.2, first paragraph.

As none of the documents D10 to D12, D14, D15 or D20 appears to be relevant for the independent claims as granted, and therefore the documents are not suitable to address the issues which led to the decision under appeal, the board did not admit D10 to D12, D14, D15 or D20 into the appeal proceedings.


This decision is anything but a scoop. It however reminds some fundamental aspects of opposition proceedings:

  • Any evidence and the corresponding argumentation filed by an opponent after expiry of the 9 months opposition period is to be considered prima facie late.
  • The time limit under R 116(1) is not an invitation to file further submissions. This applies the more so in appeal, as the board will issue a communication under Art 15(1) RPBA which triggers the third level of convergence.
  • Discussing the prima facie relevance of late filed evidence, does not mean deciding in substance on its relevance.
  • If the OD has correctly exercised its discretion, a board will not set aside a decision of admissibility or non-admissibility taken by an OD (or an ED).

It is somehow surprising that after 40+ years of opposition proceedings such basic things have to be reminded.

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