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.

T 0066/12 - Discretion for late filed requests

Key points

• The Board did not admit some late filed auxiliary requests.
• The Board refuses to refer questions to the Enlarged Board. The board observes that " Article 114(2) EPC gives the opposition division the discretionary power to decide whether or not to admit such a request, and that under Article 111(1) EPC the board may also exercise any power within the competence of the department responsible for the decision under appeal. It is thus beyond doubt that in the circumstances specified in the question, the board would in principle have the power to decide not to admit such a request, so that the only question which would remain open would be that of whether the board had exercised its discretionary power correctly. Such a question is however inherently dependent on the circumstances of the particular case, so cannot be considered to be a point of law of fundamental importance. The question proposed for referral therefore does not meet the requirements of the first paragraph of Article 112(1) EPC." 

EPO T 0066/12 -  link

Reasons for the Decision

4. Second, third and fifth to seventh auxiliary requests

4.1 Admissibility of these auxiliary requests

4.1.1 Claim 1 of the second request comprises all the features of claim 1 of the first auxiliary request, together with a definition that the electric power storage device is a battery, and adds the following feature: "a vehicle auxiliary (50) and a fuel cell auxiliary (51) that are connected between the battery (20) and the DC-DC converter (30), wherein the fuel cell auxiliary (51) is driven by the electric power from the battery (20) so as to warm-up and start the fuel-cell (40)".

This latter feature has a basis only in paragraph [0046], lines 34 to 36 of the published patent (and the corresponding passage on page 14 of the underlying application as originally filed). It can thus be assumed not to have been addressed in the search report. This feature might perhaps, as argued by the respondent, contribute to enhancing the overall fuel efficiency. It nevertheless constitutes a new measure to do so which is independent of any measure taken on the basis of the ratio of a maximum output of a fuel cell to a maximum total output of a fuel cell and an electric power storage device as previously claimed. It therefore represents a change in direction of the respondent's case. This is most evident from the fact that the respondent's main arguments concerning novelty and inventive step for the main and first auxiliary requests concerned the use of the battery to provide power for extended periods of time, whereas at least the second half of this added feature concerns only the start-up phase of operation.

T 1738/12 - Not admitting is procedural violation

Key points

• The decision of the OD to not admit experimental reports into the proceeding which were filed after the final date for making written submissions (Rule 116), forms a substantial procedural violation.
• "[The] opposition division failed to give any consideration to the essential criterion as to the prima facie relevance of the data presented in [the reports]. ... Finally, although [the opponent] objected to the late-filing of [the reports], it is not apparent from the content of file that the opponent actually requested adjournment of oral proceedings, or an opportunity to conduct further tests." 

EPO T 1738/12 - link

Reasons for the Decision

1. The appeal is admissible.

2. Substantial procedural violation; reimbursement of the appeal fee

2.1 Pursuant to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full if the board deems the appeal to be allowable (cf. points 6 and 7 below), and a substantial procedural violation has occurred which renders the reimbursement equitable.

In the present case, the alleged substantial procedural violation relates to the decision of the opposition division not to admit two test reports into the proceedings, namely, documents (17) and (18), which were submitted after the final date for making written submissions in preparation for the oral proceedings pursuant to Rule 116 EPC.

T 1104/11 - Late filed request and role of the Board

T 1104/11 - dated 29 April 2015 - [C]

For the decision, click here

Key point

• " Where the [patent proprietor as appellant] requests the Board to acknowledge [] inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC."

2. Auxiliary request
2.1 The appellant filed the auxiliary request with fax on 23 April 2015, i.e. only three working days before the oral proceedings before the Board. Due to this late filing the admission of the request in the proceedings is subject to the discretionary power of the Board in accordance with Articles 13(1), (3) RPBA.

2.2 As put forward during the oral proceedings, the independent claims of the auxiliary request, i.e. including claim 1, have been completely reformulated. Features present in claim 1 of the main request are distributed in different locations in claim 1 of the auxiliary request and are combined with a rather long list of features taken from the description. There are no concrete explanations as to their basis ("all the features set out in section 5.1.2 of the provisional opinion of the Board have been introduced into independent claims" is the only substantiation) and as to these combinations with existing features of this claim. This already makes a prima facie assessment whether the requirements of Article 123(2) EPC are fulfilled impossible. In fact, it is apparently expected that the Board performs the acts the requester should have performed.

This manner of proceeding is regarded by the Board as being contrary to the following conditions frequently applied in connection with Article 13(1) RPBA for its admission: the efficiency of the proceedings should not be impaired and the request being prima facie allowable under Article 123(2) EPC.



1. Main request

1.1 Since the Board considers that the subject-matter of independent claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision whether the other requirements of the EPC are fulfilled.

This kind of unusual approach messes up the discussion of the Auxiliary Request, which was filed to address clarity and Art. 123(2) issues, not inventive step...

2.3 It may well be that, as argued by the appellant, the claims had to be re-worded for clarity reasons, but this does not change the issues mentioned above.

2.4 Apart from the issues with Article 123(2) EPC, there is also the further issue with inventive step. In fact, in this respect the respondent was left with only three working days for it to assess whether a long list of new added features taken from the description indeed created more differences of claim 1 over D1, their effects, the problem(s) solved, etc. in terms of inventive step. This cannot be expected of the respondent without adjournment of the oral proceedings (Article 13(3) RPBA), since also on that issue of inventive step there is no clear guidance or argumentation in the accompanying letter applying the "problem-solution" approach starting from D1, according to the Boards of Appeal case law.

In view of the main request, it appears to me that inventive step was not intended to be based on these additional features but on the features already in te main request.

2.5 The appellant argued that the independent claims of the auxiliary request are based on those of the main request (auxiliary request III of the statement of grounds of appeal) with the further addition of all the features listed by the respondent in its reply, page 6, which were regarded by the respondent as leading to an inadmissible intermediate generalisation due to their omission in the claims. For the appellant, the amendments to the independent claims were therefore to simply address this respondent's objection with respect to Article 123(2) EPC.

For these reasons, the respondent could not be surprised by the amendments conducted in the auxiliary request and, hence, the auxiliary request should be admitted in the proceedings, for this reason alone.

2.6 The Board cannot share the appellant's view for the above mentioned reasons (point 2.4) given by the respondent during the oral proceedings.

Where the appellant requests the Board to acknowledge also inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC.

In fact, the Board shares the respondent's view that the issue is not a matter of whether the respondent has been surprised by the amendments but rather a matter of a fair conduct from the appellant's side.

Finally, the difficulties to communicate and coordinate with its client, as argued in writing by the appellant (letter dated 23 April 2015), are entirely internal reasons, which cannot be taken into consideration by the Board.

2.7 In view of the above, the auxiliary request is not admitted in the proceedings (Articles 13(1), (3) RPBA).

T 2541/11 - Documents filed with appeal are at discretion of the board

Key point

• The allegedly novelty destroying document E12 filed with the statement of grounds is not admitted as being late filed under Article 114(2) EPC.
• The Board notes that E12 was filed three years ago, but that its particular relevance was only argued in appeal, and does not seem to approve of such strategy. 

This post has been kept in stock for some time.

T 2541/11 - 16.04.2015

Dated 17.12.2014 - Board 3.2.04 - publication C - for the decision, click here

Summary of Facts and Submissions
[Text after break]

T 0167/11 - Documents filed with Notice of Opposition but not relied on

Key point

• Prior art documents which are submitted with the Notice of Opposition, but which are not used to substantiate any argument, can not be declared "inadmissible". Rather the OD can not consider them.

This post has been kept in stock for some time.

T 0167/11 - 27.02.2015

Dated 22.01.2015 - Board 3.2.07 - publication C - for the decision, click here

Reasons for the Decision

3. Remarks on the procedure before the Opposition Division

The Opposition Division concluded in its communication of 8 February 2010 annexed to the summons to oral proceedings that all the further documents "are not admissible under Article 99(1) and Rule 76(2)(c) EPC since no case to answer was based upon those documents" (see point 2.1.3 above). The same occurred in its communication of 3 November 2010 confirming the date of the oral proceedings.

It appears that the Opposition Division adheres to the concept that an opposition may have a "partial admissibility" in the sense that documents filed with the opposition, but which are not "in support of these grounds" (i.e. the grounds mentioned in the opposition) as mentioned in Rule 76(2)c) EPC, are also not complying with Article 99(1) EPC and can therefore be found "inadmissible". This appears to be an analogous application of Rule 77(1) EPC, which applies, however, to the opposition as a whole.

The Board cannot agree with this approach. What an Opposition Division can do, however, is to indicate that it sees no need at that point in time to consider the evidence for which no substantiation has been submitted. This has the same result, but is not formulated as a procedural decision taken by the Opposition Division in the early stages of the proceedings.

"Admission into opposition proceedings" only appears to apply when Rule 116(2) EPC is to be considered, i.e. facts and evidence filed after the final date for making written submissions.

As a consequence, the evidence filed with the opposition is not "outside" of the proceedings, but is "in" the proceedings. Of these, the Board only deems D1 sufficiently relevant, so as to be discussed for inventive step.