EPO: Board of Appeal communication not sufficient for late filings
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

EPO: Board of Appeal communication not sufficient for late filings

As previously discussed in this column, the Boards of Appeal of the EPO have a few tools at their disposal, which they use to conduct EPO appeal proceedings efficiently. In particular, Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires appellants to provide their complete case in their statement of grounds of appeal or response to an appeal.

Using this Article, the Boards of Appeal can choose not to admit evidence or amendments to a patent that are filed late in appeal proceedings.

It has generally been accepted, however, that late-filed evidence or claim amendments could be admitted into appeal proceedings, if they are a response to a filing or argument made by another party. So, for example, if a patentee-appellant files new data with their appeal to support an invention, an opponent-appellant should be able to submit counter-evidence, for example in the form of experiments. In effect, a late-filing needs to be justified by a change in circumstances.

When summoning the parties to oral proceedings, a Board of Appeal will often provide a preliminary opinion on the issues to be discussed. When the summons to oral proceedings and preliminary opinion are issued, appellants can be motivated to file new arguments, evidence or claim amendments as a "response" to the Board's preliminary opinion.

In some cases, parties to appeal proceedings have attempted to justify a late-filed submission on the grounds that a preliminary opinion from the Board of Appeal is negative. However, the Case Law of the Boards of Appeal (Chapter IV, C-1.3.9) reminds parties that "The purpose of a communication of a board of appeal …is not an invitation to the parties to make further submissions or to file further requests (T 1459/11)."

In other words, the Boards of Appeal will not allow late-filed submissions to be justified solely for the reason that their preliminary opinion was negative in some respect. There has to be additional justification.

Decision T1459/11 quoted above is supported by another recent decision T0128/14, in which a patentee-appellant attempted to introduce new requests into proceedings, for the reason that the preliminary opinion from the Board was negative. This justification was not deemed sufficient.

It appears that justification for late-filing can only be based on actions of other parties, and not the EPO itself.

Edward J Farrington

Inspicos A/S

Kogle Allé 2

DK-2970 Hoersholm

Copenhagen, Denmark

Tel: +45 7070 2422

Fax: +45 7070 2423



more from across site and ros bottom lb

More from across our site

Managing IP’s senior reporter Rani Mehta interviewed attendees at the INTA Annual Meeting in Atlanta about how they made the most out of their first day
A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
Gift this article