2.6.2 Introduction of new arguments

In T 248/92 the examining division had based its decision on arguments submitted for the first time during oral proceedings. The board held that the examining division's decision had not been taken contrary to Art. 113(1) EPC 1973. Although one of the purposes of oral proceedings was to settle as far as possible all outstanding questions relevant to a decision, they did not have a constraining effect in the sense of requiring an immediate decision to be taken at the end of those proceedings. If the appellant had felt the need for further reflection, he could have asked for the oral proceedings to be adjourned or for the proceedings to be continued in writing so that he could study carefully the newly introduced arguments, which had obviously been crucial to the decision.

In T 623/12 the opposition division had found, on the basis of an argument first submitted by the opponent during the oral proceedings, that several auxiliary requests did not comply with Art. 123(2) EPC. The opposition division gave the patent proprietor only one opportunity to file a new claim, based on one of the previous auxiliary requests, and warned that "other requests may suffer from other deficiencies under Art. 123(2) EPC". It then decided that the new auxiliary request still did not comply with Art. 123(2) EPC. According to the board, the opposition division's warning did not provide the patentee with a basis for an informed choice since neither the objections nor the requests affected by them were specified. By acting in this manner, the opposition division did not exercise its discretion in respect of the admissibility of the patentee's late-filed request but arbitrarily decided not to allow the request. This arbitrary decision deprived the patent proprietor of a proper opportunity to comment on the admissibility of its further request and to reply to the objections of the opposing party.

In T 1014/10 the appellant (patent proprietor) argued that during the opposition proceedings it had been given no opportunity to study the opponent's submissions because they were delivered to its office only on the day of the oral proceedings. The board observed that it was the duty of the parties – and of the board – to check the content of the electronic file in order to make sure that no submission had been added in the days before the oral proceedings. Moreover, the proprietor could have requested an interruption of the oral proceedings to study the submissions, or even asked the opposition division not to admit them into the proceedings. As shown by the minutes, the proprietor did not make use of these procedural options. Under these circumstances, the late-filed submissions, which furthermore did not contain any new facts, were to be put on the same footing as new arguments which might have been put forward and discussed anyway during the oral proceedings. The board did not see any violation of Art. 113 EPC.

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