T 0628/14 - Rule 116 is no invitation

Key points

• The Board confirms, as established case law, that Rule 116 EPC " should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds [] as established with the notice of opposition" 

Reasons for the Decision

1. Non-admitting documents D9 and D10

1.1 Documents D9 and D10 had not been admitted into the proceedings because (see contested decision, point 11) there were no reasons to suspect that, prima facie, these late-filed documents prejudiced the maintenance of the opposed patent. The opposition division found that D9 and D10 were not prima facie relevant, in particular not more relevant than the closest prior art already on file, since D9 related to a different method of supplying the sealant without the use of a compressor and D10 did not show a separate procedure for inflating tyres.

1.2 Appellant II argues that D9 and D10 had been filed in time within the time limit under Rule 116 EPC and should have been admitted. However, according to the established case law, Rule 116(1) EPC (former Rule 71a EPC 1973) should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote) as established with the notice of opposition according to Rule 76(c) EPC (former Rule 55(c) 1973, see G 9/91, point 6 of the Reasons). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant II, so the board confirms the view taken by the opposition decision that D9 and D10 have been filed late.

1.3 In fact, the request of the appellants to have D9 and D10 admitted into the proceedings amounts to a request to overrule the way in which the first-instance department has exercised its discretion pursuant to Article 114(2) EPC. According to established case law, a Board of Appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

As can be taken from the contested decision (point 11), the opposition division applied the criterion of prima facie relevance, which is considered to be the right criterion in case of late-filed submissions. Moreover, the board cannot see that the opposition division exercised its discretion in an unreasonable way. The appellants argue that the opposition division did not duly consider that document D9 shows a second hose for connection to the tyre and related to the same technical field. However, there is no reason to assume that the opposition division did not reasonably consider this argument, which was already on the table in first-instance proceedings, in a prima facie approach. Having identified further differences in comparison to the prior art on file (see above), the opposition division concluded that D9 and D10 were not more relevant or might prejudice the maintenance of the patent.

1.4 Therefore, the board sees no reason for overturning the decision of the opposition division non-admitting documents D9 and D10.