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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

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