5.1.6 Concept of "late-filed" and implications for discretion

In T 487/13 the board held that, by deciding not to admit auxiliary requests 4 to 6 directly after late-filed document D10 was admitted into the proceedings, the opposition division did not respect the appellant's right to be heard, which was inextricably linked to the principle of fair and equal treatment of the parties. Since these new requests were filed in direct response to a change in the subject of the proceedings, they were submitted in due time and the opposition division had no discretion to disregard them.

Likewise, in T 754/16 the opposition division had not admitted auxiliary requests 8 and 9, filed during oral proceedings, on a prima facie basis (referring to Art. 114(2) and R. 116 EPC). The board noted that this presupposed, in the first place, that the requests were late (confirming T 273/04). This was however not the case since filing the auxiliary requests was a direct response to the opposition division's change of opinion in the oral proceedings. Under R. 116(2) EPC, requests filed after the final date set for making written submissions can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent, which was not the case here. See also T 586/16.

In T 966/17, however, the board explained that, in opposition proceedings, R. 79(1) EPC allowed the patent proprietor to amend the description, claims and drawings within a period set by the opposition division. Later amendments, by contrast, were admissible only at the opposition division's discretion, as was clear from R. 81(3) EPC for instance. The board then considered that the opposition division's expression of a different opinion at the oral proceedings from the one provisionally set out in the communication accompanying the summons was not enough by itself to deprive it of that discretion and oblige it to admit whatever requests were filed at the oral proceedings. It was permissible for the decision on admitting new requests filed by the appellant in response to a new line of attack taken by the opponent on the basis of a newly filed document to take into consideration whether those requests were prima facie allowable or would anyway have to be refused owing to other objections already raised at a previous stage in the proceedings. See also T 908/19 and T 1523/22, in which cases the boards considered that the respective auxiliary requests had been filed in due time in accordance with R. 79(1) EPC and that therefore the question whether they were "clearly allowable" was not relevant; no exercise of discretion was available to the opposition divisions on the issue of admissibility.

Another approach was taken in R 6/19. In this decision the Enlarged Board pointed out that the right, found in the second sentence of Art. 123(1) EPC, to at least one opportunity to amend, did not extend to a patent proprietor in opposition proceedings. It concluded that the opposition division had the discretion, given in the first sentence of Art. 123(1) EPC, not to admit such requests.

In T 1776/18 the board analysed whether the concept of "not submitted in due time" in Art. 114(2) EPC relied on fixed criteria, such as a certain point in time in the proceedings, or, alternatively, on relative criteria, such as individual procedural developments. It spoke against relying on relative criteria. It observed inter alia that, for appeal proceedings, the RPBA implemented Art. 114(2) EPC in a manner which in principle was binding (T 1042/18) and relied on fixed criteria in order to determine whether a board had the discretion not to admit a certain submission. In the board’s view this approach was also preferable for opposition proceedings as an approach relying on relative criteria tied to individual procedural circumstances had the grave disadvantage that the opposition division's discretionary power was then not clearly and predictably delimited by the law itself. As to the interpretation of R. 116(2) EPC when applied to opposition proceedings, the board did not share the views expressed in T 754/16 that requests filed after the final date set for making written submissions could only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent (see also T 1171/20). The primary purpose of inviting the patent proprietor to file amended claim requests under R. 116(2) EPC was to expedite the opposition proceedings, and to prevent the patent proprietor from filing such requests after the date specified in R. 116(1) EPC. The board found that R. 116(2) EPC did not limit the opposition division's discretionary power under Art. 114(2) EPC and R. 116(1) EPC. In the board’s opinion, as a rule, this discretionary power did not depend on the contents of the opposition division's communication under R. 116(1) EPC. However, if the opposition division invited the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complied with this invitation by filing the required amendments by the date set under R. 116(1) EPC, the opposition division's discretion not to admit that claim request may effectively be reduced to zero.

In T 921/21 the board emphasised that, even if the approach taken in T 1776/18 were followed, the opposition division had to exercise its discretion based on the correct criteria. In the case in hand, however, the opposition division had taken into account at least one improper criterion, namely that the requests had been filed so unusually late as to justify a departure from the principle usually applied of admitting requests filed in response to facts filed late by the other party. The board pointed out that the assumption that the patent proprietor had taken note of the opponent's written submission before Christmas, and thus prior to the EPO’s communication of the submission on 20 January 2021, was speculative and disputed by the appellant. The division had therefore exercised its discretion in a flawed manner.

In T 364/20 auxiliary requests were filed after expiry of the time limit set under R. 79(1) EPC and before expiry of the time limit set under R. 116(1) EPC. The board noted that under similar circumstances, the board in T 221/20 had found the auxiliary requests to be admissibly raised. However, in the view of the board in the present case, it could not be held that any claim request submitted after the expiry of the time limit set under R. 79(1) EPC and before the expiry of the time limit set under R. 116(1) EPC was automatically filed in due time and thus was admissibly raised. It depended on whether it was submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division. The board noted with reference to T 966/17 that opposition divisions had the discretion to not admit any late-filed claim request if a decision on admittance was required. Hence, the boards had the discretion to consider a late-filed claim request not to have been admissibly raised (see also chapter V.A.4.2.2c)).