T 1776/18 (II) - What is late-filed ?

Key points

• This is the second post about this decision.
• The Board in the present decision addresses the issue of "Article 114(2) EPC - the concept of "not submitted in due time"
• "When answering the question of whether [a submission was submitted not in due time], one can either rely on fixed criteria, such as a certain point in time in the proceedings after which submissions are considered late, or, alternatively, on relative criteria, such as whether the submission was made according to the principle of procedural economy or in direct response to a new submission by another party. Relative criteria are necessarily a moving target."
• "[...] in appeal proceedings the fixed point in time after which a certain submission is late-filed is the end of the first-instance proceedings. Considerations such as whether a party could not have adequately reacted to a request or document filed at a late stage of the first-instance proceedings do not determine whether a submission is late-filed, but are instead relevant to the question of how a board should exercise its discretion"
• I think many parties would be surprised if a timely reply to a communication of a Board under Rule 100(2) EPC would be seen as late-filed, but this appears to be implied by the Board's remark that the cut-off point is the end of the first instance proceedings. In fact, the Board appears to suggest that everything newly presented in an appeal is by definition late-filed, which seems consistent with the RPBA.
• "For opposition proceedings, there are also fixed points in time which allow the deciding body to determine whether a submission was filed in due time within the meaning of Article 114(2) EPC. In particular, evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC may be considered to not have been filed in due time (T 1734/08, Reasons 2; see also T 66/14, Reasons 2.3). For the patent proprietor, a corresponding point in time would be the end of the period under Rule 79(1) EPC. Accordingly, the admittance of party submissions made after these points in time would generally be subject to the Opposition Division's discretion under Article 114(2) EPC. This, however, does not mean that such submissions should in principle not be admitted."
• These observations seem correct to me, as far as they concern objections of the opponent against the claims as granted and the reply of the patentee to objections in the Notice of opposition. The Board's later conclusion, however, refers to the date set under Rule 116(1) EPC, which is a different point in time. 
• "According to an alternative view, the question of whether a submission is not submitted in due time - which determines whether or not an Opposition Division has discretion under Article 114(2) EPC not to admit that submission - does not depend on fixed points in time but rather on relative criteria. Such criteria are, in particular, whether the party making the submission acted "in accordance with the principle of procedural economy" and observed "a fair degree of procedural vigilance", which is assumed to be the case if a submission was filed, for example, as a reaction to an unforeseeable development (T 502/98, Reasons 1.5) or in direct response to a change in the subject of the proceedings (T 487/13, Reasons 6.2)."
• "In any case, an approach relying on relative criteria tied to individual procedural circumstances has, in the Board's view, the grave disadvantage that the Opposition Division's discretionary power is then not clearly and predictably delimited by the law itself. Accordingly, an approach relying on fixed points in time is also preferable when considering Article 114(2) EPC as providing the legal basis for disregarding claim requests [as the Board does]."
• As a comment, the  Board's analysis may touch on a somewhat philosophical point: if holding a submission inadmissible would be a violation of the right to be heard under Article 113(1), does the panel still have discretionary power to admit under Article 114(2)?
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• The Board then reasons that the word "admitted" in Rule 116(1) ("New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed") means that the OD has the discretion to admit (or not) even if the subject of the proceedings has changed, which would be incompatible with the approach relying on relative criteria, according to the Board.
• " As an interim conclusion, a claim request which is filed in opposition proceedings after the date set under Rule 116(1) EPC is not submitted in due time within the meaning of Article 114(2) EPC. In the present case, auxiliary request 4A was therefore not submitted in due time."
• "Depending on the specific circumstances, it may also be the case that the Opposition Division has very little discretion not to admit a certain submission which is provided at a certain point in time in reaction to a certain development in the proceedings. In this context, aspects such as procedural economy and procedural vigilance can and should be taken into account. However, this concerns how the Opposition Division exercises its discretion rather than whether it has any discretion in the first place. "
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EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t181776eu1.html

4.6 Article 114(2) EPC - the concept of "not submitted in due time"

4.6.1 The question of whether the deciding body has discretion not to admit a certain submission under Article 114(2) EPC must be distinguished from the question of how that discretion should be exercised.

4.6.2 When answering the question of whether the deciding body has discretion not to admit a certain submission, one can either rely on fixed criteria, such as a certain point in time in the proceedings after which submissions are considered late, or, alternatively, on relative criteria, such as whether the submission was made according to the principle of procedural economy or in direct response to a new submission by another party. Relative criteria are necessarily a moving target.

4.6.3 Article 114(2) EPC applies both to proceedings before the departments of first instance and to proceedings before the Boards of Appeal. For appeal proceedings, the RPBA 2020 implement Article 114(2) EPC in a manner which in principle is binding (T 1042/18, Reasons 4.7) and rely on fixed criteria in order to determine whether a Board has discretion not to admit a certain submission. Under Article 12(2) and (4) RPBA 2020, a submission constitutes an amendment, the admittance of which is subject to a Board's discretion if it is not directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. The only exception to this concerns a party's demonstration that this part was already admissibly raised and maintained in the first-instance proceedings. As a result, any submission which has not been made during the first-instance proceedings is in the appeal proceedings considered not to have been submitted in due time within the meaning of Article 114(2) EPC. Accordingly, in appeal proceedings the fixed point in time after which a certain submission is late-filed is the end of the first-instance proceedings. Considerations such as whether a party could not have adequately reacted to a request or document filed at a late stage of the first-instance proceedings do not determine whether a submission is late-filed, but are instead relevant to the question of how a board should exercise its discretion (see also CA/3/19, pages 35 and 36, explanatory remarks on Article 12(4) RPBA 2020).

4.6.4 For opposition proceedings, there are also fixed points in time which allow the deciding body to determine whether a submission was filed in due time within the meaning of Article 114(2) EPC. In particular, evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC may be considered to not have been filed in due time (T 1734/08, Reasons 2; see also T 66/14, Reasons 2.3). For the patent proprietor, a corresponding point in time would be the end of the period under Rule 79(1) EPC. Accordingly, the admittance of party submissions made after these points in time would generally be subject to the Opposition Division's discretion under Article 114(2) EPC. This, however, does not mean that such submissions should in principle not be admitted.

4.6.5 In the present case, the patent proprietor filed auxiliary request 4A not only after the expiry of the period set under Rule 79(1) EPC, but also after the final date for making written submissions specified according to Rule 116(1) EPC. Hence, even if not the expiry of the period under Rule 79(1) EPC but the date specified under Rule 116(1) EPC is considered to be the relevant fixed point in time that determines whether a certain submission is "not submitted in due time" within the meaning of Article 114(2) EPC, auxiliary request 4A would have been late-filed.

4.6.6 According to an alternative view, the question of whether a submission is not submitted in due time - which determines whether or not an Opposition Division has discretion under Article 114(2) EPC not to admit that submission - does not depend on fixed points in time but rather on relative criteria. Such criteria are, in particular, whether the party making the submission acted "in accordance with the principle of procedural economy" and observed "a fair degree of procedural vigilance", which is assumed to be the case if a submission was filed, for example, as a reaction to an unforeseeable development (T 502/98, Reasons 1.5) or in direct response to a change in the subject of the proceedings (T 487/13, Reasons 6.2).

4.6.7 An approach relying on relative criteria for determining whether an Opposition Division has discretion not to admit an amended claim request does not seem to be compatible with considering Article 123(1) EPC and Rules 79(1) and 81(3) EPC to be the only legal basis for not admitting claim requests in the opposition proceedings, as these provisions seem to provide for a fixed point in time after which such requests are considered late-filed (see T 966/17, Reasons 2.2.1). In any case, an approach relying on relative criteria tied to individual procedural circumstances has, in the Board's view, the grave disadvantage that the Opposition Division's discretionary power is then not clearly and predictably delimited by the law itself. Accordingly, an approach relying on fixed points in time is also preferable when considering Article 114(2) EPC as providing the legal basis for disregarding claim requests.

4.6.8 Furthermore, under Rule 116(1), fourth sentence, EPC, facts and evidence filed after the final date referred to in Rule 116(1) EPC "need not be considered, unless admitted on the grounds that the subject of the proceedings has changed." Firstly, the phrase "facts and evidence" in Rule 116(1) EPC must be understood, as in Article 114(2) EPC, as encompassing substantiated claim requests. Secondly, the word "admitted" expresses the exercise of discretionary power, and the phrase "on the grounds" indicates a criterion for exercising this discretionary power. Rule 116(1), fourth sentence, EPC thus confirms that a change in the subject of the proceedings must be taken into account by the Opposition Division in the course of exercising its discretion. It is therefore not compatible with Rule 116(1) EPC to make the existence of the Opposition Division's discretion under this provision subject to the condition that there was no change in the subject of the proceedings, as the approach relying on relative criteria does. Hence, at least as of the final date referred to in Rule 116(1) EPC, the approach described in section 4.6.6 cannot, in the Board's view, be applied.

4.6.9 As to the exercise of its discretion, the Opposition Division must bear in mind that in opposition proceedings more weight must be given to examination ex officio under Article 114(1) EPC than in appeal proceedings (cf. G 9/91 and G 10/91, Reasons 18). Depending on the specific circumstances, it may also be the case that the Opposition Division has very little discretion not to admit a certain submission which is provided at a certain point in time in reaction to a certain development in the proceedings. In this context, aspects such as procedural economy and procedural vigilance can and should be taken into account. However, this concerns how the Opposition Division exercises its discretion rather than whether it has any discretion in the first place. The correct exercise of discretion is subject to review by the Boards of Appeal (see section 4.8.1 below).

4.6.10 As an interim conclusion, a claim request which is filed in opposition proceedings after the date set under Rule 116(1) EPC is not submitted in due time within the meaning of Article 114(2) EPC. In the present case, auxiliary request 4A was therefore not submitted in due time.