1.3.3 Opposition divisions' exercise of discretion

It is at the opposition division's discretion whether to admit late­filed documents (Art. 114(2) EPC). According to settled case law, it must first examine them as to their relevance. Late­filed facts and evidence and supporting arguments should only exceptionally be admitted into the proceedings if, prima facie, there are reasons to suspect that such late-filed documents prejudice the maintenance of the European patent in suit (see, in particular, T 1002/92, OJ 1995, 605; Guidelines E-V, 2 - June 2012 version; and point 1.2. above "Examination as to relevance").

The discretionary power conferred by Art. 114 EPC necessarily implies that the EPO department of first instance must have a certain degree of freedom in exercising its power (G 7/93, OJ 1994, 775). A board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (T 640/91, OJ 1994, 918). This rule also applies with respect to opposition division decisions on the admission of late­filed submissions (T 1209/05, T 1652/08, T 1253/09). It is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance in order to decide whether or not it would have exercised such discretion in the same way (T 75/11).

In T 267/03 the board decided that a late submission not admitted by the opposition division was not to be admitted by the board if the opposition division had correctly exercised its discretionary power under Art. 114(2) EPC 1973.

In T 927/04 the board noted that the opposition division decided not to admit document D8, since it was prima facie not relevant for demonstrating a prior use. The board, having considered the evidence of D8 and the opposition division's decision that such evidence was not admissible, was satisfied that the opposition division did not misuse its discretion under Art. 114(2) EPC 1973 when it elected to disregard document D8. Consequently, the board decided not to introduce document D8 into the proceedings.

In T 68/02 document D16 was discussed extensively by the respondent without objecting to its admission into the proceedings. The document was further discussed by the Opposition Division in its opinion. At the start of the oral proceedings before the Opposition Division the respondent requested that the document not be admitted into the proceedings. The Opposition Division as a consequence did not admit the document. The board could not agree with the action of the Opposition Division in this respect. The discussion of the document by the respondent and the Opposition Division before the oral proceedings took place led to the normal expectation that the document was already in the proceedings and that the oral proceedings could be prepared on this basis. A late filed document which is already in the proceedings cannot later be declared not to be admitted without there being very exceptional circumstances, for example where the admittance had been based on an incomplete knowledge of the situation.

In T 1194/08 the opposition division indicated that E15, a late filed document, was accepted as a belated submission. In the oral proceedings, however, the opposition division decided to reject the document as having been filed late. In the opinion of the board, the opposition division was not entitled to reverse its admittance of the document during the oral proceedings. The opponent was entitled to rely on the earlier decision of the opposition division to admit the document into the proceedings. The board therefore considered that E15 was already in the proceedings so that there was no need to take a decision regarding its admittance into the appeal proceedings.

In T 467/08 the board refused the request to disregard comparative test results in the appeal procedure submitted in the opposition proceedings, and stated that neither the EPC itself nor the RPBA provide for such a decision. The boards of appeal can merely review a decision taken by the opposition division concerning the admittance or non-admittance of late filed submissions, documents and requests filed in those earlier proceedings, or it can decide whether or not to admit submissions, documents and requests filed in the appeal proceedings. As a consequence of the conclusion that said submission was part of the opposition proceedings it could not be late filed in the appeal proceedings according to Art. 13 RPBA. For the same reason they could not be eliminated by the board on the basis of Art. 12(4) RPBA.

In T 1652/08, the appellant argued that the late­filed documents, which the opposition division had admitted - wrongly in its view - to the proceedings, were no more relevant than those previously introduced. The board, however, held that, in establishing whether a document was prima facie relevant, the decisive factor was not whether it was even more relevant than a previously filed document, but rather whether it was prima facie relevant for the outcome of the case. Where documents had been properly admitted into the first­instance proceedings and the contested decision was based on them, they had to be admitted on appeal too.

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