European Patent Office: Late-filed arguments before the Boards of Appeal
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

European Patent Office: Late-filed arguments before the Boards of Appeal

Practitioners before the EPO are aware that EPO proceedings are front-loaded. In effect, all evidence, amendments and arguments should be on file as early as possible in the proceedings. This especially applies to inter-partes proceedings, in which late-filed evidence or amendments could place other parties at a disadvantage.

The front-loading principle before the Boards of Appeal of the EPO is embodied in Article 114(2) EPC, which allows the EPO to disregard "facts or evidence" which are not submitted in due time. Articles 12 and 13 of the Rules of Procedure of the Boards of Appeal also set limits on the extent and timing of late submissions.

Generally, new facts, documents and evidence would be considered, if the filing was occasioned by an argument or a point raised by another party or in the appealed decision and could not have been filed before under the circumstances of the case. The timing of the filing is also a consideration.

Article 114(2) EPC does not mention late-filed "arguments", and many decisions of the Boards of Appeal interpreted this in a limiting manner (such as T92/92 and G4/92). Under this interpretation, late-filed arguments would always be admissible.

However, the EPO has also recognised that late-filed arguments – even if they are based on the same evidence – can substantially alter a party's case, and may place other parties at a disadvantage, in a similar manner to late-filed evidence.

We have noted a trend in a number of recent decisions from the Technical Boards of Appeal in cases in which the admissibility of late-filed arguments was at issue. In decisions T55/11 and T1621/09, a distinction is made between late-filed arguments which are a merely development of previous argumentation, or which present a completely new case. Arguments which are a development of previous argumentation are likely to be admitted, while arguments which present a completely new case may be rejected. In T1621/09, in particular, the Board applied similar considerations to late-filed arguments as had previously been applied to late-filed evidence: the timing of the arguments, the complexity of the arguments and the impact they might have on other parties to proceedings.

If late-filed arguments are to be admitted before the EPO, it appears therefore that the chances of success are greater if they are a development of previous arguments, rather than completely new arguments.

farrington.jpg

Edward Farrington


Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070 2423info@inspicos.comwww.inspicos.com

more from across site and ros bottom lb

More from across our site

AI
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Counsel explain how pricing flexibility, patent agents and being business partners can help them maintain profitable patent prosecution practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Speakers at an INTA event weighed in on why firms should create AI use policies and how they stay on top of the latest developments
Gift this article