6.3. Final date for written submissions in the preparation for oral proceedings and late submission of new facts and evidence – Rule 116 EPC

R. 116(1) EPC (R. 71a(1) EPC 1973) stipulates, inter alia, that, when the EPO issues the summons to oral proceedings, a final date for making written submissions in preparation for the oral proceedings must be fixed. New facts and evidence submitted after this date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed. The same is true for applicants or patentees invited under R. 116(2) EPC (R. 71a(2) EPC 1973) to submit documents which meet the requirements of the EPC.

As construed according to its object and purpose, R. 116 EPC (R. 71a EPC 1973) is intended to give the decision-making department and other procedural parties enough time to prepare thoroughly for the oral proceedings and so ensure that they are not faced with surprising new facts and do not take potentially inappropriate decisions in undue haste (T 765/06; as to the reasons for the introduction of R. 71a EPC see T 343/08). The purpose of R. 116(1) EPC is to provide the EPO with a case management framework for the preparation of oral proceedings (T 798/05, T 66/14). In T 1067/08 the board held that the purpose of this provision was in particular to prevent parties from seeking unjustified procedural advantages by abusive tactics in disregard of procedural economy and to the disadvantage of other parties.

In T 1750/14 the board interpreted R. 116(1) EPC in conjunction with R. 132(2) EPC. From the wording of R. 116(1) EPC it was not clear whether the non-applicability of R. 132(2) EPC to R. 116(1) EPC also precluded the possibility of extending specified periods, implying that the final date for making submissions in preparation for the oral proceedings set under R. 116(1) EPC could not be changed. The board considered that a change of the final date should normally be allowable when the date for oral proceedings is postponed. At least in cases where a final date is specified relative to the date for oral proceedings (usually one month before the scheduled oral proceedings), it could even be argued that the final date was postponed automatically when the oral proceedings were postponed.

According to the established case law, R. 116(1) EPC (former R. 71a EPC 1973) should not be construed as an invitation to submit further evidence (see T 39/93, OJ 1997, 134; T 452/96; T 628/14; T 710/15). There is no general duty for an examining division to provide feedback on an applicant's reply to a summons to oral proceedings, in advance of such oral proceedings (T 343/08, T 462/06, R 2/13). In T 462/06 the board also stated that R. 116 EPC did not mean that already in the communication all lines of arguments or a detailed reasoning for the decision should be set out. In T 601/06 the board held that R. 71a(1) EPC 1973 did not impose an obligation on the EPO to give a preliminary opinion on the allowability of individual claims when issuing the summons.

In T 355/13 the board held that nothing in the expression "the points to be discussed" could lead to the conclusion that reasons for a preliminary opinion of an opposition division on the matter related to the points to be discussed should be given. The annex to the summons could legitimately only mention the points that needed to be discussed. The annex to the summons in an adversarial inter-partes procedure such as opposition proceedings should not give rise to the impression that the case was decided without having heard the parties, and thus it should not comprise any definite opinion on the final conclusion of the case. However, an opposition division could express a preliminary opinion on the case.

R. 116 EPC (R. 71a EPC 1973), and Art. 114(2) EPC on which it is based, refer to late-filed facts and evidence but not to new arguments, which can be made at any stage in the first-instance proceedings (T 131/01, OJ 2003,115; T 926/07; T 1553/07; T 2430/09; T 2238/15).

For a comprehensive overview of the case law regarding late submissions in general (independent of the preparation of oral proceedings governed by R. 116 EPC), see chapter IV.C.4. "Late submission". For case law when the applicant files amended claims in appeal proceedings after the oral proceedings have been arranged and then does not attend them, see chapter V.A.4.5.3 a) "Absence of applicant (patent proprietor) from oral proceedings".

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