2.2.3 Principles relating to the exercise of discretion  

In exercising its discretion under Art. 114(2) and Rule 116(1) and (2), the division must assess all relevant factors of the case.

The division first has to consider the relevance of the late-filed facts or evidence (see E‑VI, 2) or the allowability of the late-filed amendments on a prima facie basis. If these facts or evidence are not prima facie relevant, i.e. if they do not appear to affect the outcome of the proceedings (T 320/15), or if these amendments are not clearly allowable (see H‑II, 2.7.1), they will not be admitted.

For instance, if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor responds by submitting amendments after the final date set under Rule 116(1), and possibly not until the oral proceedings, the division could, in principle, treat them as late-filed and apply the criterion of "clear allowability" (see H‑II, 2.7.1) in assessing whether they can be admitted. However, the division will consider admitting such amendment requests if they relate to the subject-matter of dependent claims as granted.

Convergence of requests is another relevant factor that the division may consider when exercising its discretion (for a definition of convergence, see H‑III, 3.3.2.2).

For the purpose of admissibility, a late-filed document's relevance is normally decided relative to the amended claims against which it is cited. Documents that are of limited relevance to an initial set of claims may acquire new relevance as a result of subsequent amendments to those claims (T 366/11).

Before admitting these submissions, the division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and whether the parties can reasonably be expected to familiarise themselves with the new facts or evidence or the proposed amendments in the time available.

As regards procedural expediency, the division may decide not to admit late-filed facts or evidence where, although they are relevant, admitting them would entail a prolonged adjournment of the proceedings, for example because a witness still has to be found or lengthy tests are still necessary. However, it may also postpone the oral proceedings, but doing this may mean having to consider the apportionment of costs in opposition proceedings (Art. 104). Similarly, if late-filed requests are based on subject-matter not previously covered by the claims, they will normally not be admitted, again for reasons of procedural efficiency. Admitting such requests could entail postponing oral proceedings and so lead to a decision on apportionment of costs.

Examples of possible abuse of the proceedings are:

– The patent proprietor introduces at short notice a proliferation of auxiliary requests which are not a reaction to the course of the proceedings. 

– The opponent knowingly abstains from asserting a public prior use based on its own activities until late in the proceedings, even though the supporting evidence had become fully available earlier (see T 534/89).

– The applicant or patent proprietor presents a large number of requests or incomplete variants of requests and invites the division to choose, shifting the responsibility for determining the content of the application or patent to the division. It is the duty of any party to proceedings to make its own case and to formulate its own requests (see T 446/00).

As to whether the parties can reasonably be expected to familiarise themselves with the new facts or evidence or the proposed amendments in the time available:

– It may not become apparent until the oral proceedings that the pending request submitted to overcome grounds for opposition is not allowable under the EPC. The opponent must always expect to have to discuss subject-matter based on dependent claims as granted if they are reasonable in number. 

– The proprietor is in principle free to withdraw previously submitted amendments and defend the patent as granted unless this would amount to an abuse of the proceedings.