T 0097/90 (Lubricating agents) vom 13.11.1991

I. The wording of Article 114(1) EPC does not mean that the Boards of Appeal have to conduct rehearings of the first instance proceedings, with unfettered right, and indeed obligation, to look at all fresh matter regardless of how late it was submitted. Article 114(2) as well as Article 111(1) EPC set a clear limit to the scope of any new matter that may be introduced into an appeal by the parties so that cases on appeal must be, and remain, identical or closely similar to those on which first instance decisions have been rendered (following T 26/88, OJ EPO 1991, 30; T 326/87, OJ EPO 1992, 522; T 611/90, OJ EPO 3/1992).

II. Where fresh evidence, arguments or other matter filed late in the appeal raise a case substantially different from that decided by a first instance, that case should be referred back to the first instance where this is demanded by fairness to the parties - with an award of costs against the party responsible for the tardy introduction into the appeal proceedings (cf. point 2 of the Reasons for the Decision).

III. Cases where a new ground of objection is raised late in the appeal should only be referred back to the first instance where the admittance of the new ground would result in the revocation of the patent (following T 416/87, OJ EPO 1990, 415). Where the maintenance of the patent would not be put at risk the Board can either refuse to admit the fresh ground of objection, or admit it into the appeal proceedings, and decide it against the opponent. The latter can be preferable, leading, as it does, to detailed written reasons being made available for possible further use in litigation before national courts (cf. point 2, last paragraph, of the Reasons for the Decision).