2.2.1 New facts and evidence  

Rule 116(1) is an implementation of Art. 114(2) which reflects developments in the case law on facts or evidence not filed in due time. It makes it clear that the examining or opposition division has discretion to disregard new facts or evidence on the basis that they have been filed after the date indicated in the summons under Rule 116, unless they have to be admitted because the subject of the proceedings has changed.

For instance, if the opposition division states in the annex to the summons that the patent is likely to be revoked, and a request for amendment filed in time is admitted but relates to subject-matter not covered by the claims as granted, the subject of the proceedings has changed. Consequently, new facts and evidence submitted by the opponent in response to this request will be admitted, even if they arrive after the final date set under Rule 116.

However, if the proprietor's request relates to amendments based only on claims as granted, new facts and evidence submitted by the opponent will be treated as late-filed even if submitted before the final date, i.e. they will be admitted only if they are prima facie relevant unless there are other aspects militating in favour of admitting them, such as a large number of dependent claims in the patent as granted (E‑VI, 2.1).

Similarly, if the opposition division concludes in its preliminary and non-binding opinion that maintenance of the patent is not prejudiced by the facts and evidence submitted so far by the opponent, this does not in itself give the opponent the right to have new facts and evidence admitted, even if they are submitted before the final date fixed under Rule 116(1).

When considering exercising its discretion to refuse to admit a further auxiliary request under Rule 116, the opposition division must first review the contents of the request. This is done to ensure that the review includes an assessment of whether the amendments are a fair attempt to overcome the objections and whether the request is prima facie allowable.

Refusing any further amendment may be appropriate if there are signs of procedural abuse, for example if it becomes evident after various unsuccessful amendments that the proprietor is not seriously trying to overcome the objections but is only delaying the procedure.

In order to prevent the subsequent filing of various consecutive requests, the division may ask the proprietor to simultaneously present the complete set of requests addressing a specific issue that has already been discussed.