T 0084/17 - No need to discuss prima facie allowability

 Key points

• The Board has to decide on the admissibility of AR-1 which was not admitted by the OD.
• “The appellant [patentee] requested that this decision [of the OD] be overturned for improper exercise of discretion and further that auxiliary request 1 be admitted into the appeal proceedings as it was an appropriate response to the decision at least for the reason that the decision was based in part on the late filed documents D9, D10 and D11.” 
• “The appellant [patentee] in essence argued that the opposition division had exercised its discretion not to admit this and the other belated auxiliary requests not in accordance with the right principles because it only considered the timeliness of the filing of the auxiliary requests without also considering the substance of the amendments introduced. In this context, [patentee] referred to the (unpublished) decisions T 463/95, T 1485/08, T 544/12, T 2415/13 and T 129/12.”
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• This Board finds that the OD had exercised its discretion in a reasonable way. “the opposition division correctly stressed that the auxiliary requests had been filed very late without appropriate justification, although the underlying objections had been on file since the notice of opposition and their pertinence had been commented on in the annex to the summons. This conclusion is absolutely correct.” 
• “Moreover, contrary to the appellant's submissions, the opposition division did not merely consider the late filing but also took into account the substance of the amendments in the auxiliary requests. ” However, not the prima facie allowability but whether the amendments were foreseeable. “In particular, the board understands the reasons given in point 4 of the decision under appeal as the conclusion that during the oral proceedings the other parties could not be expected to deal with the restriction of the claimed subject-matter specifically proposed in auxiliary request 1. ” 
• The Board approves of this approach: “the opposition division had made clear that considering the unreasonable late filing of auxiliary request 1 combined with the not foreseeable amendments, the opponents could not have been expected to discuss the new requests. Under these circumstances, it is clear that even if the auxiliary request had been prima facie allowable, it would not have changed the division's discretionary decision. Thus, there was no need to further discuss prima facie allowability in the appealed decision.” 
  
  
• For a different approach, see T 0756/18 of Board 3.2.07, headnote and r.4 suggesting that the OD must examine whether the requests are prima facie (or clearly) allowable.

EPO Headnote

If the arguments in the appealed decision show that for the discretionary decision taken in the first instance some criteria weighed so heavily that other criteria cannot outweigh them, it is not always necessary that all criteria that could theoretically influence a discretionary decision concerning the admittance of a late filed request are discussed in the appealed decision (point 2.2.3)

If the need to file amended requests does not arise owing to the submission of additional documents that are merely confirming the arguments on file but had existed before, the filing of such additional documents cannot always justify the filing of new (belated) requests (point 2.3).

EPO T 0084/17 -  link

Decision text omitted.