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.


Edward Farrington

Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070

more from across site and ros bottom lb

More from across our site

In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
The winner of Managing IP’s Life Achievement Award discusses 50 years in IP law and how even he can’t avoid imposter syndrome
Saya Choudhary of Singh & Singh explains how her team navigated nine years of litigation to secure record damages of $29 million and the lessons learned along the way
The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
A team of IP and media law specialists has joined from SKW Schwarz alongside a former counsel at Sky
Gift this article