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