T 0921/21 - Two lines of case law about Rule 116

Key points

• The decision was issued on 16.08.2023 and is already discussed elsewhere. 
• The opponent filed new documents by the Rule 116 date before the OD. The proprietor filed new claim requests in reply before the oral proceedings. The OD did not admit them. The Board has to review under Art. 12(6) RPBA.
• The Board in adjusted machine translation: " In the jurisprudence of the Boards of Appeal, there are different approaches to assessing the admissibility of claim requests, filed under Rule 116(1), sentence 4, and  (2) EPC in response to a [case amendment of the opponent]."
• "According to one view, a new application prompted by new submissions is considered timely at least if it was submitted at the earliest possible point in the procedure (see ... T 754/16, reasons for the decision 1.3.1; T 487/13, reasons 6.2; see also T 688/16, Reasons 2, according to which the discretion is conditioned by a communication of the reasons opposing maintenance). This earliest possible point in time is determined based on evaluative criteria. According to this legal opinion, the opposition division would not have had any discretion not to admit the applications".
• "According to another view, it should always be possible to hold inadmissible any new submissions if a time limit has not been met (Article 114(2) EPC). This should apply, in particular, to sets of claims filed after the deadline set in Rule 116(1) EPC (T 1776/18, [from 2023] reasons 4.6). According to this view, the assessment is not limited to checking whether the submission was made at the earliest possible point in time, but criteria evaluating the content, such as prima facie allowability, can also be taken into account (T 966/17, reasons 2; T 1776/ 18, reasons for the decision 4.6)."
• However, in this case, the OD had based its decision on the argument that "there were reasons to assume that the patent owner did not only take note of the opponent's written submission when it was transmitted by the Office on January 20, 2021, but rather before Christmas. "
• The Board: "this consideration represents an inadmissible discretionary criterion because it is speculative and was disputed by the [appellant/proprietor]. Rather, what is relevant is when the written statement was served on the patent holder. However, notification [to the proprietor] was only arranged four weeks after documents D5 to D9 were received [by the EPO]. When it would have been possible to view this in the register* is irrelevant and also not proven. Thus, by taking into account an inadmissible criterion, the opposition division has (at least also) come to its conclusion that the applications were filed so exceptionally late that a departure from the normally applicable principle of admitting applications that were filed late by the opposing side was justified facts were submitted."
• * - as a comment, documents are visible in the online file, not in the Register.
• "the fact that the department partly based its discretion on the correct criteria does not change the fact that an inadmissible criterion was also taken into account"
• The request is admitted.
• The request is also held allowable.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/case-law-appeals/decisions/recent/t210921du1