n) New objections or evidence in response to the patent proprietor's submissions at first instance 

(i) In response to requests filed by the patent proprietor at an early stage of the proceedings 

The boards have repeatedly ruled that new objections against claims as granted or against claims filed with the reply to the notice of opposition should have already been filed in the opposition proceedings. The opposition division rejecting other objections previously raised by the opponent has not been deemed to be a surprising development in the proceedings that could justify raising new objections only on appeal (see e.g. T 2917/19, T 523/20).

In T 2917/19, the appellant had relied on documents D6 to D11 (patents or patent applications submitted with the statement of grounds of appeal) both to demonstrate the common general knowledge and as secondary documents for its inventive step attack. The board noted that patents and patent applications usually cannot establish the common general knowledge. In so far as said documents were used as secondary documents (D6 to D10), the board held that they created a fresh case. The claims at issue were, however, those of the patent as granted. The opposition division having acknowledged an inventive step could not be regarded as a surprising development of the proceedings, nor did it give rise to the option of reacting by filing new documents. On the other hand, the board did take document D11 (manual reflecting the common general knowledge) into consideration. The document was similar to D2, which was already part of the proceedings, but was a newer document and supplemented the content of D2.

In T 186/20, documents E18 and E19 were filed to support the appellant's (opponent’s) arguments in relation to the inventive step of features that were already present in claim 1 as granted. In the board's view, therefore, there were no discernible circumstances that would justify not submitting documents E18 and E19 until the statement of grounds of appeal.

For further examples, see T 557/21 (objection against claim 1 as granted, no circumstances justifying admittance), T 3280/19 (new objections against the main request, which was the patent as granted; additionally the documents on which these objections were based were not prima facie novelty destroying), T 186/21 (new objections of added subject-matter arguing unallowable intermediate generalisation and multiple selections).

(ii) In response to requests filed by the patent proprietor by the final date as per R. 116 EPC

As regards whether an opponent can still be expected to react at the opposition proceedings stage to requests filed by the patent proprietor on the last possible date under R. 116 EPC, the boards have come to differing decisions (partly due to the respective circumstances of the various individual cases).

In T 1520/20 the board had to decide on the admissibility of an attack submitted for the first time in the appeal proceedings regarding the inventive step of claim 1 of auxiliary request 4. As to whether this attack could have been filed earlier, the board indicated that auxiliary request 4 filed with the grounds of appeal was identical to auxiliary request 1 filed at the oral proceedings before the opposition division, and that this auxiliary request 1 had in turn encompassed the subject-matter of a previous auxiliary request filed on the final date as per R. 116 EPC (two months before oral proceedings). The opponent had therefore had several weeks to prepare attacks in this regard.

In T 351/20, however, two documents were admitted, which had been filed with the statement of grounds of appeal to pursue lines of argumentation already raised in opposition and addressing a feature that had been introduced two months prior to the oral proceedings before the opposition division. See also the similar conclusion reached in in T 1578/20, where the features introduced two months prior to the oral proceedings in opposition were, moreover, taken from the description.

In T 2035/16 the board dealt with a case where the final date for making written submissions pursuant to R. 116(1) EPC had been set as one month before the oral proceedings. The proprietor had filed auxiliary request II shortly before this date and refiled this request in its reply to the appeal. In its rejoinder the opponent submitted, for the first time, an inventive step attack against auxiliary request II starting from document D25. The board held that the opponent could not have submitted D25 before the opposition division as there had been insufficient time left before the oral proceedings to find the document and incorporate it into the case. Moreover, it considered that the rejoinder had been the first opportunity for the opponent to address this request, as it had not been dealt with in the decision of the opposition division and had only become part of the appeal proceedings when the proprietor had refiled it. (For a different opinion on this last point, however, see T 664/20, which is summarised in chapter V.A.4.3.5c) (ii)).

(iii) In response to a defence or contestation by the patent proprietor during written proceedings 

If the patent proprietor asserts a defence or dispute during the written proceedings before the opposition division, the opponent may also have to react in the opposition proceedings by making further submissions.

In T 1279/20 the appellant (opponent) filed F18 only with their statement of grounds of appeal. F18 addressed the relevance to inventive step of the examples in a secondary document (F14) relied on by the opponent. The relevance of these examples had however already been disputed by the patent proprietor in reply to the notice of opposition. The board concluded that this evidence should have been filed during the opposition proceedings in order to be considered by the opposition division.

For a counter-example, see T 1729/22. Since the patent proprietor had first mentioned a particular technical effect on the date fixed under R. 116(1) EPC, and that effect was discussed for the first time in the oral proceedings, the board considered the statement of the grounds of appeal as the first possible opportunity for the opponent to file the means of proof related to this question.

(iv) In response to submissions at a very late stage of the proceedings 

T 1362/20 and T 186/20 concerned objections or evidence filed with the statement of grounds of appeal in response to claim amendments made during first-instance oral proceedings which included new claim features taken from the description. The new submissions

In T 186/20, documents E17 and E20 were submitted for the first time with the statement of grounds of appeal inter alia in relation to a feature that had not been added to the claim in question until the first-instance oral proceedings. In addition, this feature had been taken from the description. The board concluded that neither E17 nor E20 could have been submitted during the first-instance oral proceedings.

Similarly in T 1362/20, the board admitted the clarity objection, raised by the appellant for the first time with the statement of grounds of appeal, against a particular feature that had already been included in the auxiliary requests filed at the oral proceedings before the opposition division. The board indicated that these late-filed auxiliary requests included features taken from the description and the opponent had had just half an hour to deal with each one. In the board's view, although the opponent could have identified a clarity issue and raised an objection within that amount of time, this could not have been expected of the opponent under Art. 12(6), second sentence, RPBA. Since the amendments had been taken from the description and admitted into the opposition proceedings at a very late stage, fairness dictated that new objections against the amended claims should still be admitted if they were raised at the earliest opportunity in the appeal proceedings.

In T 1520/20, on the other hand, the board did not admit a new attack raised only on appeal against a set of claims which corresponded to an auxiliary request filed at the oral proceedings before the opposition division and covering the subject-matter of a previous auxiliary request that had been filed on the final date stipulated under R. 116 EPC.

In T 1085/20 the board admitted a document (D6) filed on appeal by the respondent (opponent) in reaction to a new defence by the proprietor at the oral proceedings before the opposition division. This document presented attempts at reproducing an example of a prior art document to prove that it anticipated the subject-matter of claim 1 of the main request. The aim of this declaration was to corroborate the content of a first declaration, filed in response to the summons to oral proceedings before the opposition division. The patent proprietor reacted to this first declaration only at the oral proceedings. The board considered the filing of D6 with the reply to the statement of grounds of appeal to be a timely reaction.

In T 2973/19 the board held that the opponents could not have been surprised by the fact that a claim feature – here a certain term – whose omission they had contested for the first time at the oral proceedings before the opposition division was then added to the claim at issue in an auxiliary request filed at these oral proceedings. As such, this could not justify the late filing of documents in reaction to a new claim request containing this term.

(v) Not necessarily to be considered for admittance: prima facie relevance, lack of knowledge of prior art, difficult retrieval 

As pointed out in T 576/18 referring to T 724/08, in cases in which objections or evidence should have already been submitted in the opposition proceedings, it is not necessarily relevant for admittance (in this case under Art. 12(4) RPBA 2007) if said objections or evidence are prima facie relevant. The board noted that neither RPBA 2007 nor the current version of the RPBA specified prima facie relevance as a factor to be taken into account. Other decisions in which the board pointed out that prima facie relevance was not a factor to be taken into account when deciding on admission under Art. 12(6), second sentence, RPBA can be found in chapter V.A.4.3.7r) (ii) below (T 1522/21 and T 765/20).

See also T 980/19 date: 2021-10-19 and T 2964/18 (both on Art. 12(4) RPBA 2007), in which the boards followed the view expressed in T 724/08, that it was of no relevance whether certain disclosures were difficult to retrieve. Similarly, in T 1309/21 it was found that a mere lack of knowledge of documents was inadequate as grounds for their admission in the appeal proceedings; unsuccessful attempts to obtain these documents on time from a third-party company had not been proven.