7.2.4 New facts

In T 125/93, where a highly relevant document was filed by the patentee shortly before the date appointed for oral proceedings, the board admitted it into the proceedings pursuant to Art. 114(1) EPC 1973, which had the concomitant effect of altering the factual framework of the case under appeal compared with that upon which the decision under appeal had been based. The legal consequence of such a shift in the framework being well settled, and there being no "special reasons" of the kind referred to by the Enlarged Board in G 9/91 and G 10/91 (OJ 1993, 408 and 420), the board referred the case back to the opposition division for further prosecution.

Many decisions have confirmed that if fresh evidence, arguments or other matter filed late in the appeal proceedings raise a case substantially different from that on which the contested decision was based, the case should be remitted to the department of first instance where this was demanded by fairness to both parties. See, for example, T 611/90, T 97/90, T 847/93. The board in T 611/90 pointed out that the public's and the parties' interest in having the proceedings speedily concluded may then be overridden by the requirement that appeal proceedings should not become a mere continuation of first-instance proceedings. In T 852/90 the board, although it rejected the request for remittal, stated that the need to remit should the case alter followed from the immutability of the legal requirement that appeals should remain appeals, despite the investigative powers conferred upon the boards by Art. 114(1) EPC 1973, as well as the principle that appeals under the EPC are judicial proceedings, whose task is to decide whether an appealed decision was right on its merits. (The late-filed evidence amounted to no more than an amplification - albeit a significant one - of the case already canvassed before the opposition division).

However, the board in T 97/90, found that it did not follow from T 611/90 that all cases in which a new ground of objection was raised late in the appeal must be remitted to the department of first instance. On the contrary, this should only be done if the admission of the new ground into the appeal proceedings would lead to revocation of the patent. The board therefore decided that there was no need to remit the case. See also T 113/96 and T 577/97 for decisions where remittal was refused.

The board in T 402/01 of 21.2.2005 pointed out that a patent proprietor had no automatic right of remittal after the citation of a new document with the grounds of appeal, even if there was a change in factual framework, at least in cases where the document was filed in reaction to amendment of the claim, providing that both parties' right to a fair hearing (Art. 113(1) EPC 1973) was not jeopardised. See also T 133/87 and T 1252/05.

Referring to T 402/01 and also T 111/98, the board in T 1493/06 agreed; in T 111/98, implicitly referring to the right to be heard pursuant to Art. 113(1) EPC 1973, it was considered that remittal due to the admission of a new document should rather be an exception, for example if, without remittal, a party would not have had sufficient opportunity to defend itself against an attack based on the new document. In the case before the board in T 1493/06, the board had introduced document D7 at an early stage in the appeal procedure in a first communication, and subsequently issued another fully reasoned objection based on document D7 in the communication accompanying the summons to oral proceedings. The board, applying the criterion of T 111/98, therefore considered that the appellant had had sufficient opportunity to react to the introduction of document D7, so that remittal was not necessary in order to comply with Art. 113(1) EPC.

Nonetheless, citing T 402/01, the board in T 1600/06 found that even if the patent proprietor has no automatic right of remittal after the citation of a new document, the patent proprietor's right to be heard in accordance with Art. 113(1) EPC may require remittal when, as in the case before it, the new document alters the legal and factual framework of the case significantly and a "fresh case" results.

In the absence of strong mitigating circumstances for the late filing of a fresh case, the late-filing party should bear all the additional costs incurred by his tardiness (T 611/90, OJ 1993, 50; T 97/90).

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