1.4.3 Article 12(4) RPBA

According to Art. 12(2) RPBA, the statement of grounds of appeal shall contain a party's complete case. Art. 12(4) RPBA requires the board to take into account everything presented by the parties under Art. 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Art. 12(2) RPBA. However, according to Art. 12(4) RPBA, the board has the discretionary power to hold inadmissible facts, evidence and requests which could have been presented or were not admitted in the first instance proceedings.

Art. 12(4) RPBA enables the boards to penalise an infringement of the duty to facilitate the first­instance proceedings, i.e. a failure to display due co­operation through the submission of facts, evidence and requests in the manner required up to a certain point in the proceedings, and so serves to ensure compliance with the requirement of a fair procedure and to expedite processing of the case. Moreover, it does not entail any arbitrary different treatment of similar cases of belated submissions which is incompatible with the procedural scheme. The duty to facilitate proceedings applies equally to opponents (with respect to the submission of their objections) and patentees (with respect to their means of defence) (T 2102/08).

In T 876/05 the board rejected the opponent's argument that filing new documents a few days before the oral proceedings before the department of first instance was destined for failure and that it was therefore preferable for him not to file those documents until the appeal stage. The board held that Art. 10a(4) RPBA 2003 (Art. 12(4) RPBA) put documents that could have been submitted before the department of first instance and documents which had been submitted but had not been admitted on an equal footing. Had these documents been filed in the opposition proceedings, the worst that could have happened was that they would have been regarded as inadmissible by the opposition division, so the consequences would have been no different than if they had not been filed. The board decided, when examining the patentability of the filed requests, to consider only the documents that appeared immediately relevant (T 624/04).

In T 229/08 the opposition division had disregarded evidence designated as M12 because it was late-filed and because prima facie availability to the public could not be established. M12 had been filed on the last working day before the oral proceedings. The board considered that it was primarily charged with reviewing the opposition division's exercise of its discretion. The provision of Art. 12(4) RPBA related to evidence which not only was not admitted but which also "could have been presented" in first instance proceedings. It was therefore evident that in both cases the board would have equal power to hold late-filed evidence inadmissible, whereby the party filing the evidence during appeal would have to overcome the additional hurdle of satisfying the board that its action in first presenting it in the statement setting out the grounds of appeal did not amount to tactical abuse.

In T 305/07 the appellant filed the experimental evidence which had not been admitted by the opposition division with its statement of the grounds of appeal and requested its admission. The board stated that the claims at issue differed from those dealt with by the opposition division and in relation to which it considered the experimental evidence as irrelevant. With regard to Art. 12(4) RPBA, second half- sentence, the question arose whether, and if so to what extent, the experimental evidence related to the case under appeal. The board came to the conclusion that none of the experimental evidence submitted with the statement of the grounds of appeal was relevant to the present case. Therefore, it could not be considered to "relate" to it. Hence, in accordance with Art. 12(4) RPBA, second half-sentence the board decided not to admit the experimental evidence filed with the statement of the grounds of appeal.

In T 79/11, various sets of experimental data were submitted with the statement of grounds of appeal, clearly in response to the decision under appeal and with a view to supporting the appellant/patentee's arguments on inventive step. Although the data could already have been submitted at first instance, their later submission was not an unreasonable response to the reasons given for the decision under appeal.

In J 5/11 the Legal Board stated that the Office's duty to examine evidence of its own motion is more stringent in relation to evidence that is in the public domain, and the case for admitting such evidence when it is filed out of time by the parties is correspondingly stronger. The Office's duty to examine of its own motion evidence that is in the private sphere of the party concerned is obviously limited. Such evidence can only be taken into consideration by the Office if it is brought to the Office's notice by the party concerned. If evidence of that type is not put forward in the proceedings before the first-instance department of the Office, it is difficult to see any compelling reason why the Board of Appeal should exercise its discretionary power under Art. 114(2) EPC and Art. 12(4) RPBA in such a way as to admit the evidence when it is filed with the grounds of appeal or a fortiori at a later stage of the appeal proceedings. That is particularly true when, as in the present case, the first-instance department has expressly drawn the appellant's attention to the need for supporting evidence, indicated precisely what type of evidence is needed and given the appellant an adequate time limit within which to file the evidence. Thus, the applicant for re-establishment of rights who failed to substantiate his application adequately in the first instance proceedings, in particular after being expressly invited to do so, cannot normally make good that failure by submitting additional evidence with the grounds of appeal.

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