This section concerns when the parties should submit evidence and when the taking of evidence should be requested or ordered. It should be read together with chapter III.G.3.3 below, which deals with the issue of respect of the right to be heard where the department decides not to consider the evidence offered. The circumstances in T 1028/11, for example, illustrate the impact of the timing of an offer of evidence.
While it has been accepted in the jurisprudence of the boards of appeal that EPO departments have some discretion in admitting evidence, e.g. where the evidence is unnecessary or of no relevance (cf. T 142/97, OJ 2000, 358, point 2.2 of the Reasons), the main legal basis for refusing the admission of evidence is, as stated by the board in T 1698/08, the provisions dealing with the late filing of evidence (Art. 114(2) EPC, Art. 12(4) and 13 RPBA). See for consideration of late-filed evidence: Chapter IV.C.1 "Late submission".
R. 116 EPC (former R. 71a EPC 1973) should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded and evidenced throughout the proceedings prior to the hearing of the appeal (T 39/93, OJ 1997, 134, cited more recently in this connection in e.g. T 1932/12).
In T 100/97, the board discussed in detail the criteria to be applied to late-filed evidence. Since a UK infringement action had been stayed pending the outcome of the EPO appeal, a swift settlement of the case was especially desirable, and admitting facts and evidence submitted at a late stage might have resulted in a remittal protracting the already lengthy proceedings and thus further delaying the UK proceedings. Moreover, for the contents of the statements to be considered sufficiently credible, they had to be corroborated by documents of a definite date. Taking into account the very late stage in the proceedings and in the absence of any such documents, it could not be established with a sufficient degree of certainty what had been made available to the public before the priority date of the opposed patent; the board therefore decided to disregard the late-filed evidence (Art. 114(2) EPC). Compare with T 1057/09 (point 5.9 of the Reasons) concerning remaining doubts as to the authenticity of a late evidence.
In T 1830/11, the board observed that there are no provisions in the EPC obliging opponents to provide evidence against every possible fallback position defined in the dependent claims. Thus, if amendments were made to the claims during oral proceedings before the opposition division (as in the case at issue, where claim 1 had been amended to include the features of a dependent claim in the patent as granted), the obligation to submit evidence "in due time" under Art. 114(2) EPC micht, depending on the circumstances, arise first at the stage of filing the statement of grounds of appeal. The board added that, contrary to what the patent proprietor (respondent) had claimed, T 66/11 did not specify that late-filed documents cited in response to amendments resulting from a combination of granted claims were inevitably inadmissible. That the newly cited document did not disclose all features of claim 1 did make it any less relevant to its purpose, which was to show that the opposition division had erred in the contested decision on a specific point.
The board in T 574/02 found that documents could not be considered late-filed simply because they had only been submitted on appeal, and any board faced with a request that it refuse to admit a document or evidence as late-filed first of all had to verify whether it really was late or whether, in the particular circumstances of the case, it had been submitted in due time (for a detailed account of the relevant criteria, points 2.2.2 to 2.3 of the Reasons). Finding that the filing party had at all times acted and reacted promptly and with good judgment, the board held that the documents had been submitted in due time within the meaning of Art. 114 EPC. Concerning the moment in time fixed by the rules when a party's case is deemed to be completed, refer for example to T 1949/09 (late-filed tests).
In T 1096/08, the board could not share the view of the opposition division. Exercising its discretion under Art. 12(4) and 13(1) RPBA, the board considered it appropriate to take evidence from the two witnesses offered by the respondent (opponent) during the first oral proceedings. By contrast, the board did not admit to the first oral proceedings a further witness who had been offered at a late stage. In the board's view, the piecemeal approach of the respondent to asserting yet another alleged prior use shortly before the second oral proceedings clearly could not have been dealt with by the appellant or the board without further adjournment of the oral proceedings (for the consequences of such a piecemeal strategy, see T 245/10 below).
The board in T 1100/07 held that, although the opponent's request that a witness be heard had been filed late and unsatisfactorily presented, the opposition division ought to have heard the witness, particularly since he could have provided testimony on a crucial point it had ultimately relied on in its decision. The case was remitted to the opposition division for a hearing of the witness. The board's decision includes extensive reasoning on its findings on witness testimony.
In case T 703/12, the board stated that, in accordance with Art. 12(2) RPBA, the appellant's statement of grounds of appeal should contain its complete case, inter alia it should specify expressly all the evidence relied on. The appellant (opponent) was aware from the impugned decision that it was questionable whether the alleged prior use had been proven beyond any reasonable doubt. Therefore the board considered that there was no justification, such as a new development in the appeal proceedings, for the appellant to wait until the oral proceedings to request that Mr B (author of the statutory declaration D2) be heard as a witness in order to prove the alleged prior uses detailed in D2. Furthermore, consistent with established jurisprudence, the generic reference to the appellant's submissions in opposition in the notice of appeal could not be interpreted as expressly specifying the offer of Mr B as a witness. Accordingly, the witness offer made for the first time during the oral proceedings constituted an amendment to the appellant's case in accordance with Art. 13(1) RPBA and could only have been dealt with by an adjournment of the oral proceedings. In accordance with Art. 13(3) RPBA, the board exercised its discretion not to hear Mr. B. On the issue of a party's complete case, refer to T 30/15.
In T 1760/10, a replacement witness, Mr S, was offered due to the death of the first witness proposed. During oral proceedings the board decided to hear Mr S as a witness. The respondent (patentee) objected to the hearing of the witness: the nomination of Mr S as a witness was late (March 2013 / notice of appeal 2010 / oral proceedings October 2013) and the appellant (opponent) had not indicated the matters on which he should testify. In the board's view, nothing should have surprised the respondent in this regard. In the communication issued with the summons to oral proceedings, the board had indeed indicated that the chain of alleged public prior use contained certain irregularities and did not seem to be sufficiently proven and that the appellant was at liberty to request Mr S to attend oral proceedings, at which he might be heard, albeit that it remained unclear at that time as to how Mr S had relevant knowledge of the events.
When a party seeks to prove potentially relevant facts by means of the statement of a witness, it is particularly important that this statement be furnished early in the opposition phase so as to enable the witness to give oral evidence in accordance with Art. 117 EPC 1973 (T 953/90).
In T 753/09 an expert declaration had been filed by the appellant (opponent) as a response to the summons to oral proceedings issued by the board, ostensibly to demonstrate how the skilled person would interpret documents E1 and E2. The expert declaration had been submitted less than two months before the oral proceedings and was therefore regarded as a late submission. Having said that it would allow such belated evidence only if it were sufficiently relevant and if the other party could reasonably react to the late filing, the board ultimately refused to admit it into the proceedings. Firstly, the declaration did not provide more technical information than the documents E1 and E2 themselves, thus from a technical point of view it was not more relevant than the documents on file. Given that the technical teaching of both documents was relatively simple, and given that patent attorneys normally had a technical background themselves, the expert's explanations might as well be put forward in an equally convincing fashion by the authorised representatives of the appellants, with no less evidential weight before the board. Secondly, an expert declaration had to be considered not just as an argument, but as evidence pursuant to Art. 117(1)(e) EPC. The other party should be given the possibility to have such an expert declaration verified or possibly refuted by another expert with the same qualifications (as requested by the respondent as an auxiliary measure). Indeed, in the particular case, such a defence against the expert declaration required quite some time.
It is clear from the provisions of Art. 13 RPBA that, in spite of the principle of the right to be heard under Art. 113(1) EPC, a party does not have the right to have evidence which he filed or offered during appeal proceedings, in particular during inter partes proceedings, admitted into these proceedings (T 1676/08). In this case the board addressed several procedural aspects, in particular the fact that – allegedly in response to expert opinions submitted by the opponent – the patent proprietor had submitted as evidence a large volume of documents comprising more than a thousand pages and containing expert opinions only one month ahead of the oral proceedings, which the board had already postponed once at the proprietor's request. Stating detailed reasons for its decision, the board applied Art. 13(3) RPBA and refused to admit one of those expert opinions in particular (D100), finding that D100 was not identifiable as of particular relevance among submissions of over a thousand pages. It also refused to order at such a late stage an opinion by an expert pursuant Art. 117(1)(e) EPC or, since the relevant conditions set out in G 4/95 were not met, to hear the party's expert at the oral proceedings in the capacity of an accompanying person.
In T 245/10 the board held that the respondent (opponent) had had sufficient time to consider the results of comparative tests filed with the statement of the grounds of appeal, and admitted them into the appeal proceedings. The respondent had announced in 2010 that it would comment on those tests and/or present counter-tests on condition the board first issued an opinion on the admissibility of the appellant's tests. The board found that, in filing its own comparative tests only a month before the oral proceedings in 2012, the respondent had taken the risk of compromising the admissibility of its own tests, observing that a piecemeal strategy resulting in multiple rounds of oral proceedings devoted solely to the admissibility of late-filed evidence ran counter to procedural economy (Art. 15(6) RPBA). Before setting out its conclusion as to whether the late-filed experimental data was admissible, the board (citing T 270/90, OJ 1993, 725, point 2.2 of the Reasons) had first of all reiterated that, in accordance with the criteria established by the boards for the exercise of discretion to admit or disregard such evidence, it had to ensure that the late submission was not a tactical abuse of procedure prejudicial to procedural fairness and that admitting the evidence would not infringe the other party's right to be heard.
In case T 712/97, the opposition division did not allow the appellant's experimental report in response to the respondent-patentee's experimental report into the proceedings. To admit the experimental report of one party, but not the response of the other party gave the appearance of discriminatory treatment. The opposition division had committed a procedural violation.
In T 973/10, the board, in exercising its discretion to decide whether to admit late-filed evidence of prior use, considered whether there were any circumstances justifying its late submission and whether it was prima facie relevant. It found that there was no justification, rejecting the appellant's (opponent's) argument that finding the evidence had been costly. The financial consequences of the workload involved could not justify submitting new evidence at the appeal stage. Nor was the late submission justified by the appellant's decision to appoint a new representative for the appeal. The board then held that the evidence was anyway not prima facie relevant. The photographs produced were not sufficiently compelling evidence because they did not enable it to reach any objective conclusion as to the nature and structural details of the device allegedly disclosed at a meeting. It thus refused to admit the late-filed evidence into the appeal proceedings (Art. 114(2) EPC in conjunction with Art. 12(4) RPBA).
The board in T 508/00 ruled that poor communication within a company or group of subsidiary companies was not an adequate and acceptable reason to admit late-filed documents the opponent had submitted during the appeal proceedings in support of an alleged prior use. Moreover, the documents in question, which included technical drawings with no explanations, were so large in number that it would have been difficult for the board or the other party to deal with them properly. The board therefore refused to admit them. By contrast, it admitted written statements produced by the opponent because they related to the alleged prior use, had been submitted relatively early in the appeal proceedings, giving the patent proprietor time to respond to them, and constituted a response to the opposition division's decision and to employee statements produced by the proprietor a month prior to the oral proceedings before the opposition division.
In J 20/85 (OJ 1987, 102), the Legal Board held that evidence should be taken as soon as an issue arises. In a dispute between the appellant and the Receiving Section as to whether a particular document had been filed on a particular day, the post room staff could not have been expected to have a clear recollection of what had happened more than a year after the events in question. See also in this chapter: T 1028/11 (late-filed request for a witness hearing); T 2003/08 (hearing of a duly summoned witness who had failed to confirm attendance but was present on the appointed day).
In T 190/05, the board found that the opposition division had been wrong to base its finding that an alleged prior use had destroyed a patent's novelty solely on a statutory declaration, because the patent proprietor had expressly disputed both the allegations made by the opponent and those in the declaration, which represented, besides, a piece of evidence and not in itself prior art. That it would have been impossible to give the witness named by the opponent the minimum two months' advance notice (R. 72(2), first sentence, EPC 1973, R. 118 EPC) of the already scheduled oral proceedings was not, in the board's view, an exceptional circumstance justifying the failure to invite him. The case was remitted to the opposition division for a hearing of the witness and also to avoid the loss of two instances for determination of the case.
A party may be heard in the absence of his patent attorney if the latter has been duly informed (cf. T 451/89 and T 883/90, ex parte cases concerning apparatus that seemed to operate in a manner clearly contrary to well-established physical laws – taking of evidence ordered at oral proceedings).