3.3. Facts under examination – applying Article 114 EPC in appeal proceedings

Art. 114(1) EPC, which also applies in appeal proceedings, requires the board to establish the facts of its own motion. See J 4/85, OJ 1986, 205; T 1800/07; T 1574/11. The obligation of ex officio examination as laid down in Art. 114(1) EPC is explicitly limited in particular by Art. 114(2) EPC, i.e. the possibility of disregarding facts and evidence not submitted in due time, which is further specified by Art. 12 and 13 RPBA. Although Art. 114(1) EPC formally also covers the appeal procedure, this provision generally applies in a more restrictive manner in inter partes appeal proceedings than in opposition proceedings (see G 9/91, OJ 1993, 408 and G 10/91, OJ 1993, 420). In T 1370/15 the board noted that this meant that a board was not excluded outright from introducing new facts and evidence in inter partes proceedings. The explanatory remarks on Art. 13(1) RPBA state: "Where the Board raises an issue of its own motion under Art. 114(1) EPC, the party's right to be heard under Art. 113(1) EPC must be respected." The board stated that this sentence made it clear that, under the RPBA, a board is not prohibited from raising issues of its own motion. 

As the Enlarged Board made clear in G 8/93 (OJ 1994, 887), the board's obligation under Art. 114(1) EPC 1973 existed only once proceedings were pending (see also T 690/98). Earlier, T 328/87 (OJ 1992, 701) had already ruled that the facts could be investigated only if the appeal was admissible. There were, however, limits to this obligation, for example under Art. 114(2) EPC 1973, where facts and evidence are submitted late. The same applied if an opponent (respondent) withdraws his opposition: in T 34/94 the board found that, "if in the event of withdrawal of the opposition the opponent is the respondent, the board may take into account evidence which was submitted by the opponent prior to withdrawal of the opposition. However, for reasons of procedural economy, the duty of the EPO to examine the facts of its own motion does not extend to its having to examine the submission of the opponent that a previous oral disclosure took place if the crucial facts were difficult to ascertain without his co-operation" (this confirmed the case law in T 129/88, OJ 1993, 598; T 830/90, OJ 1994, 713; T 887/90, T 420/91 and T 634/91; see also T 252/93 and T 1047/03).

In T 1574/11 the board observed that it was not restricted to the facts, evidence or arguments provided by the parties. As the primary purpose of the appeal procedure was to check that the contested decision was correct, the board was in principle entitled to consider the evidence provided therein if it deemed it to be relevant to its own decision.

T 182/89 (OJ 1991, 391) sets out what the obligation to investigate involves; Art. 114(1) EPC 1973 should not be interpreted as requiring the opposition division or board of appeal to ascertain whether there was support for grounds for opposition not properly substantiated by an opponent, but as enabling the EPO to investigate fully the grounds for opposition which were both alleged and properly substantiated pursuant to R. 55(c) EPC 1973 (see also T 441/91 and T 327/92).

The board in T 2501/11 stated in its Catchword: where prior publication of a citation has been admissibly disputed and the party bearing the burden of making the case for and proving it fails to provide a substantiated response, the board cannot treat that citation as prior art because opposition appeal proceedings are adversarial and so conducted in accordance with the adversary system of procedure, in which it is for the parties to make their cases and the boards' power to examine the facts of their own motion (Art. 114(1) EPC) is limited.

In T 862/16 the board raised, ex officio, a further objection under Art. 76(1) EPC. The appellant objected to the board's raising new issues in the appeal proceedings, arguing that new Art. 12(2) RPBA establishes the character of the appeal proceedings as a judicial review in which the parties have only very limited room for amending their case with respect to the first-instance proceedings. The board therefore should be similarly constrained from introducing new objections of its own motion. The board stated that Art. 12(2) RPBA framed the "primary object of the appeal proceedings [as being] to review the decision under appeal in a judicial manner", but mainly concerned, if at all, obligations on the parties and not the board. The board saw here no provision, or any other provision of the RPBA, which could and would restrict its power conferred by Art. 111(1) and 114(1) EPC to raise new objections of its own motion. This would, moreover, be incompatible with the spirit and purpose of the Convention (Art. 23 RPBA). Thus, provisions of the RPBA as secondary legislation according to Art. 23(4) EPC and R. 12c EPC could never take precedence over the provisions of the EPC itself. The board noted in passing that in ex parte appeal proceedings any new ground, i.e. one not examined by the first-instance department, could be invoked by a board of appeal under Art. 114(1) EPC during the appeal proceedings (cf. G 10/93, OJ 1995, 172). That the board might raise new objections, such as even a new inventive-step objection, had furthermore been confirmed by the Enlarged Board (see e.g. R 16/13). See also T 174/21.

In T 1370/15 the board stated in its Catchword that not only in ex parte, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. 

In T 1138/20, the board recalled that the boards of appeal constitute the first and final judicial instance and thus the only judicial body to establish both facts and law in proceedings before the EPO. As such, the boards have the power, at any stage of the appeal proceedings, to establish the relevant facts of the case before them and thereby substitute the findings of fact of the departments of first instance. However, the boards have no obligation to establish de novo, facts already established by the departments of first instance (see also T 42/19). The board underlined that review of a fact-finding process should not be conflated with the review of discretionary decisions within the meaning of G 7/93. The review of findings of fact is distinct from the review of discretionary decisions, which can only be reviewed for a particular type of errors (see G 7/93, point 2.6 of the Reasons), while a review of findings of fact has no such limitation.