T 0951/91 (Late submission) 10-03-1994

Admissibility of late-filed experimental data

4. As indicated in point VI above, the decision in this case was substantially completed on 22 November 1993.

On 25 November 1993, the board received a letter dated 18 November from the appellant, which, translated from the German original, reads as follows:

"In connection with the above-identified case, the appellant gives notice that within the next two months it intends to file the results of comparative experiments."

By a communication dated 15 December 1993, the board indicated that it regarded seeking to introduce new evidence at such a late stage of the proceedings, some twenty months after the statement of grounds of appeal had been filed, as an abuse of procedure. In the exercise of its discretion under Article 114(2) EPC, therefore, it was not prepared to admit any further experimental information.

5. So far as the board is aware, the situation faced in the present case is novel in that the board exercised its discretion under Article 114(2) EPC to disregard facts or evidence not submitted in due time by a party, before such facts or evidence had actually been filed. It is the established case law of the boards of appeal that facts and evidence, submitted for the first time in appeal proceedings, may be disregarded by the boards of appeal as a matter of discretion pursuant to Article 114(2) EPC. However, when considering a request to admit late-filed material, a board exercising an adverse discretion will normally have the opportunity to form a view of the relevance of the material before coming to a decision. It is necessary therefore for the board to review the discretionary powers provided by Article 114(2) EPC in the light of the case law of the boards of appeal and its legislative background.

5.1 The boards of appeal frequently have to decide whether late-filed documents or evidence are to be taken into account. Under Article 114(1) EPC, the EPO is obliged to examine the facts of its own motion, and in doing so, it is not restricted to the facts, evidence and arguments provided by the parties and the relief sought. According to Article 114(2) EPC, however, the EPO may disregard facts or evidence which are not submitted in due time by the parties concerned. These two provisions have generated a considerable body of case law.

5.2 The due time for an opponent to file evidence in opposition cases is at the date of filing the notice of opposition (Art. 99(1) EPC in conjunction with Rule 55(c) EPC). In this connection, reference may usefully be made to the note on "Opposition Procedure in the EPO" published in OJ EPO 1989, 417, which gives further guidance in relation to the time and manner in which the parties' cases in opposition proceedings should be presented. Thus, in paragraph 2 of the above document, it is stated:

"The EPO's aim remains to establish as rapidly as possible in the interests of both the public and the parties to the opposition proceedings whether or not the patent may be maintained given the opponent's submissions. It seeks to achieve this by means of a speedy and streamlined procedure".

Paragraph 13 of the same document, referring to facts and evidence not submitted in due time, states:

"In order to expedite proceedings, parties should in principle submit all facts, evidence and requests at the beginning of the procedure. Where this is not possible, the facts, evidence or requests must be submitted at the earliest opportunity."

5.3 The boards of appeal have endorsed the above and emphasised that opponents should present all their objections during the opposition period, in accordance with the requirement that proceedings be brought to a speedy conclusion and the principle of fairness to the other party (see T 101/87 of 25 January 1990, T 430/89 of 17 July 1991 and T 237/89 of 2 May 1991, none of which is reported in OJ EPO). As stated in T 117/86, OJ EPO 1989, 401, facts and evidence in support of an opposition which are presented after the nine-month period has expired are out of time and late, and may or may not be admitted into the proceedings as a matter of discretion under Article 114(2) EPC.

The due time, therefore, for submitting facts and evidence in the present case was the date of filing the notice of opposition on 22 February 1989, four years and nine months before the appellant's announcement of its intention to file experimental evidence and it is clear that the evidence, if admitted, would have been late.

5.4 Thus the underlying principle, clearly recognised and implemented by the boards of appeal, eg in T 117/86 (supra), T 182/89, OJ EPO 1991, 391, and T 326/87, OJ EPO 1992, 522, is one of early and complete presentation of the parties' case, as opposed to the piecemeal and tardy introduction of the arguments and supporting evidence. As stated in T 326/87:

"It is this jurisprudence, together with the express wording of Article 114(2) EPC, a wording which is clear and unambiguous in all the three languages, that sets the legal limit on the inquisitorial duties of the boards of appeal under Article 114(1) EPC ..."

5.5 The language of the two paragraphs of Article 114 EPC is not only clear, as stated above, but as a matter of legislative formulation it takes the conventional form of expressing a general obligation in the first paragraph, which is then qualified by a discretionary exception in the circumstances specified in the second. Where the discretion arises under the second paragraph, it may, in appropriate circumstances, be exercised to override the general obligation expressed in the first.

5.6 However, a leading case T 156/84, OJ EPO 1988, 372, held that the principle of examination by the EPO of its own motion under Article 114(1) EPC took precedence over the possibility of disregarding facts or evidence not submitted in due time under Article 114(2) EPC. This followed from the EPO's duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid. Thus, the EPO had to examine the relevance of citations introduced late into the proceedings. According to that decision, the sole effect of Article 114(2) EPC was to enable the EPO to disregard late- filed documents if they are not material to the decision without having to give detailed reasons (reasons for the decision, point 3.8). In practice, therefore, following this decision, the discretion under Article 114(2) EPC to disregard new facts or evidence, is normally exercised by the boards of appeal in the form of a so-called "examination as to relevance". The decision whether to take account of a late- filed document depends on its likely bearing on the outcome of the case (T 258/84, OJ EPO 1987, 119).

5.7 That interpretation does not appear to this board to accord with the clear wording of Article 114(2) EPC, while some of the reasoning used in the earlier decision may also be questioned. Apart from the above-mentioned consideration of the public interest, Article 115 EPC was invoked as an aid to the interpretation of Article 114(2) EPC. It was observed that the discretionary power to disregard late-filed matter is applied by Article 114(2) EPC to "the parties", while Article 115(1) EPC, which deals with observations by third parties, indicates that they "shall not be a party to the proceedings". From those premises it was inferred that the EPO has no power to exclude late-filed material submitted by third parties, leading to the comment that -

"It would be ridiculous if the opponent had to file documents found late through a third party in accordance with Article 115 EPC, if he wished to ensure that they would not be disregarded under Article 114(2) EPC."

To avoid that anomaly it was concluded that late-filed relevant material cannot be excluded at all, even if filed by the parties (T 156/84, reasons for the decision, points 3.5 to 3.7).

5.8 However, it is no less arguable that Article 31 of the Vienna Convention on the Law of Treaties should be applied, as it has been on numerous occasions by the Enlarged Board and boards of appeal, to the interpretation of Article 115 EPC. By interpreting the above-cited words of that article in the light of their object and purpose, it is clear that they are intended exclusively to cut down, and not to extend, the rights of third parties, still less to extend their rights beyond the rights of parties to proceedings before the EPO.

5.9 From this it would follow that if, as is clearly provided by Article 114(2) EPC, a party who is dilatory and introduces material late may have it disregarded in the exercise of the EPO's discretion, a fortiori the same sanction may be applied to a dilatory third party. There is consequently no reason to deny the existence of the discretionary power under Article 114(2) EPC to exclude late-filed material, irrespective of its relevance, although, as explained in the next paragraph, relevance may influence how that power is to be exercised.

5.10 A court or any other judicial tribunal exercising a discretionary power is obliged to do so judicially, ie it may not act capriciously, but must take due account of all the material facts. In relation to oppositions before the EPO and appeals therefrom, a material fact is the relevance of any late-filed matter, as is also the asymmetric character of opposition proceedings, in which revocation of a patent is final, whereas dismissal of an opposition leaves the opponent with a further opportunity to challenge validity before the national courts.

5.11 This interpretation of Article 114(2) EPC is in accord with the more recent case law of the boards of appeal. As the board found in T 97/90, OJ EPO 1993, 719, 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 an unfettered right, and indeed obligation, to look at all fresh matter regardless of how late it was submitted. It continued:

"Such an interpretation of Article 114(1) is out of the context not only of the remainder of the Article, namely Article 114(2), but also of the context of Article 111(1) EPC. When Article 114(1) is construed in its proper context, it becomes evident that there is a clear limit to the scope of any new matter that may be introduced into an appeal by the parties or by the board itself, because cases on appeal must be and remain identical or closely similar to those on which first instance decisions have been rendered. There is clear scope for the above interpretation in the board's jurisprudence, in cases such as T 26/88, OJ EPO 1991, 30, T 326/87 (supra), T 153/85, OJ EPO 1988, 1 and T 611/90, OJ EPO 1993, 50, as well as in a number of unpublished cases, eg T 137/90 of 26 April 1991 and T 38/89 of 21 August 1990." In the same case, the board went on to say "a blanket obligation to look at all matter, however late filed, would render the function of the first instance departments either superfluous, or delegate their role to merely providing a preliminary opinion for subsequent judicial review and decision by the boards of appeal."

5.12 The Enlarged Board has recently clarified the law in respect of the appeal procedure in G 9/91, OJ EPO 1993, 408, holding that, in contrast to the merely administrative character of the opposition procedure, the appeal procedure is to be considered as a judicial procedure, as explained by the Enlarged Board in its recently issued decisions in the cases G 7/91, OJ EPO 1993, 356, and G 8/91, OJ EPO 1993, 346 (reasons for the decision, point 7 in each case). Such procedure is by its very nature less investigative than an administrative procedure. Although Article 114(1) EPC formally covers also the appeal procedure, the application of this provision generally in a more restrictive manner than in opposition proceedings is therefore justified.

5.13 The travaux préparatoires of the EPC also support this interpretation. According to the report of the Luxembourg Intergovernmental Conference concerning the first preliminary draft of the EPC of 1970 (Art. 113(2), the text which later became Art. 114(2)):

"provides, however, that the board of appeal is not obliged to consider facts or evidence which were not submitted when they should have been. This provision serves to prevent the appeal proceedings from being excessively delayed by negligent or intentionally dilatory applicants".

Moreover, a provision to the same effect had been proposed from the outset in 1961 "to prevent appeal proceedings from being dragged out unnecessarily by malicious or negligent appellants" (EC Patent Working Party, 29 May 1961). (A detailed account of the references to Article 114(1) and (2) in the travaux préparatoires is given in T 122/84, OJ EPO 1987, 177).

5.14 Thus, although it is the established case law of the boards of appeal, following case T 156/84, that the main criterion for deciding on the admissibility of a late-filed document is its relevance, ie its evidential weight in relation to other documents already in the case, the boards have on a number of occasions disregarded late-filed evidence, refusing to examine the possible relevance of the submission.

For example, in T 534/89, OJ EPO 1994, 464, and T 17/91 (Headnote in OJ EPO 9/1993), the board exercised its discretion in each case under Article 114(2) EPC in deciding to disregard late-filed evidence of prior public use, without examining the possible relevance of the submission, on the grounds that the late filing represented an abuse of the procedure before the EPO and a breach of the principle of good faith between the EPO and the parties to proceedings before it.

In T 270/90, OJ EPO 1993, 725, the board also refused to consider late-filed experimental data, on the grounds that the late submission (two weeks before oral proceedings) represented an abuse of procedure and that the principle of fairness had been breached. Likewise, in T 741/91 of 22 September 1993 (not published in OJ EPO) the board refused to consider the relevance of evidence which had been filed one day prior to oral proceedings before the opposition division. The board found that to file evidence at such a late date was not an acceptable conduct by a submitting party and that, therefore, the opposition division should have disregarded this evidence applying the discretion conferred upon it under Article 114(2).

Similarly, the Enlarged Board in G 4/92, OJ EPO 1994, 149, found as a matter of principle that the submission of new evidence or facts at an oral proceeding, which could have been filed earlier, represents an abuse of procedure which an instance of the EPO may sanction by refusing to take such facts or evidence into account pursuant to Article 114(2) EPC.

5.15 The discretionary power given to the departments of the EPO pursuant to Article 114(2) EPC serves to ensure that proceedings can be concluded swiftly in the interests of the parties, the general public and the EPO, and to forestall tactical abuse. Parties must take into account the possibility that late-filed material will be disregarded and do their best to submit the facts, evidence and arguments relevant to their case as early and completely as possible. If a party fails to do so without adequate excuse, and admitting the evidence would lead to an excessive delay in the proceedings, the boards of appeal are fully justified in refusing to admit it in exercise of the discretion provided by Article 114(2) EPC.

6. In the present case, the board finds that the conduct of the appellant in attempting to submit evidence at such a late stage of the proceedings is unacceptable and that it is justified, in the exercise of its discretion under Article 114(2) EPC, to refuse to admit such evidence. The appellant waited nearly five years after filing its notice of opposition and some twenty months after filing its statement of grounds of appeal before seeking to introduce the experimental evidence in question. If facts or evidence are submitted by a party only at a late stage of the proceedings, the party must show good reason for the delay.

The appellant gave the board no explanation for the delay, nor has it shown that it was prevented from filing such evidence at an earlier date. The respondent, as well as the EPO and the public at large, were left in ignorance of the full extent of the appellant's case throughout this period. Were the evidence to be admitted, it would have the effect of unreasonably prolonging the proceedings as the respondent would have to be given the opportunity of commenting on the evidence and filing its own experimental evidence in response. As stated in paragraphs 5.2 and 5.3 above, it is in the interest of both the public and the parties to opposition proceedings, and equally where there are appeals from opposition decisions, to establish as rapidly as possible whether or not the patent may be maintained, given the opponent's submissions.

Substantive issues

Conclusion of the substantive issues

12. Examination of the substantive issues raised by the appellant has brought to light (i) that the claimed subject- matter differs by at least one feature from the explicit teaching of each of documents (1), (5) and (6), (ii) that the combination of features as required in the patent is not obvious in view of the documents cited, either in isolation or in combination, and (iii) that there can be no question of insufficient disclosure. It is evident that the experimental data, which the appellant intended to submit, were not likely to affect any of these conclusions.

Further procedural issues