Public prior use 

(i) Non-consideration of late submission of public prior use

Strict standards have been set by the boards of appeal particularly in the case of the admissibility of late-filed evidence of public prior use by the opponent. On the basis of Art. 114(2) EPC 1973, the boards did not include late-filed evidence in the proceedings because in the specific circumstances there had been an abuse of procedure and a breach of the principle of good faith. In such cases the boards chose to refrain from examining the potential relevance of the submission (see T 17/91, T 534/89, OJ 1994, 464 and T 211/90). In T 985/91 the board was of the view with reference to T 17/91 that late-filed documents should only be admitted into the proceedings under certain circumstances if they related to alleged prior use.

In T 17/91 an allegation of prior use based on the opponents' own activities had been filed two years after the expiry of the opposition period, with no good reason for the delay. This, in the board's view, constituted an abuse of the proceedings and a breach of the principle of good faith. Irrespective of its potential relevance, the allegation was therefore to be disregarded under Art. 114(2) EPC 1973.

Taking a similar line, the board ruled in T 534/89 (OJ 1994, 464) that an objection based on prior use by the opponents themselves which was raised only after the expiry of the opposition period (Art. 99(1) EPC 1973), although the factual circumstances were known to the opponents and there was nothing to prevent the objection being raised during that period, constituted an abuse of procedure. From this, the board concluded that when abuse of procedure was manifest, in view of the fact that a party deliberately refrained from raising an issue even though the necessary supporting evidence was available, it would be contrary to the principle of good faith to admit such evidence by applying Art. 114(2) EPC 1973 in that party's favour.

Four weeks before the oral proceedings in T 211/90 the appellant alleged public prior use for the first time. However, the evidence was already familiar to the appellant before expiry of the opposition period. The board held that the fact that the appellant was unaware of the relevance of this evidence, even though familiar with it at the time of filing the opposition, did not justify its introducing the evidence into the proceedings for the first time at such a late stage - irrespective of the reasons why it did not become aware of the potential relevance of this material until then. The board therefore decided not to consider this material in the further proceedings, without examining its potential relevance.

In T 481/99 the board said that the principle that late-filed facts, evidence and related arguments should only exceptionally be admitted into the proceedings by the opposition division (see e.g. G 9/91, OJ 1993, 408 and T 1002/92, OJ 1995, 605) did not imply that a late-filed allegation of prior use, which would be relevant if proven, was to be automatically disregarded on the ground that the new facts first needed to be established by taking evidence. However, if the submissions and/or documents relating to the late allegation of prior use showed inconsistencies or even contradictions, the deciding body was entitled to disregard the alleged prior use pursuant to Art. 114(2) EPC 1973 without further enquiries.

In T 380/00 the appellant (opponent) relied for the first time in the statement of the grounds of appeal on the non-confidential disclosure of technical features of the invention by an engineer during a job interview. The board considered that the alleged public prior use by the engineer was too poorly substantiated to justify further investigation of the matter.

On the issue of documents relating to prior use submitted during appeal proceedings, the board in T 508/00 ruled that poor communications within a company or a group of subsidiary companies did not constitute adequate and acceptable grounds for allowing the late submission of evidence concerning alleged prior use (see also T 443/09).

In T 1914/08, justifying why these documents had not been submitted until more than two years later and only shortly before the date set for oral proceedings, the respondent stated that it had been experiencing financial difficulties in the interim period. The board exercised its discretion in this regard and considered that, given the documents had been referred to and therefore available to the respondent from early on, their late filing without a justification which was causally linked to the proceedings was not in keeping with a proper conduct of the procedure. The late-filed documents were thus not admitted into the proceedings.

(ii) Consideration of late submission of public prior use

In T 628/90 an allegation of public prior use, which was filed for the first time in appeal proceedings and was adequately substantiated, was taken into account because of its possible relevance to enable thorough consideration to be given to the patentability of the subject-matter of the contested patent (see also T 150/93, T 947/99).

In T 947/99 the appellant submitted with regard to the circumstances of the late claim concerning public prior use that he had only become aware of the possibility that there might have been public prior use in the course of proceedings conducted in parallel before the Patents Court in London at a meeting on 17 May 1999. In the board's opinion, the appellant had given a very clear explanation and sound reasons as to why the claim of public prior use had been made and why it could not have been made any earlier.

In T 571/08, the board held that documents submitted by the appellant to support a new prior use, as part of a challenge to one of a set of new auxiliary requests filed shortly before the oral proceedings before the opposition division, had not been filed belatedly. The appellant had, in response to the opposition division's decision to allow the auxiliary request with the additional feature in question, filed the documents at the earliest possible opportunity, namely with its notice of appeal.

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