T 0326/87 - Late filing of evidence in opposition/appeal results in apportionment of costs - #83

Citation rank: 83
No. of citations: 61
 

T 326/87 was frequently cited in the years from its publication in 1990 to 2008. Then, it seems to have run out of fashion. It was not cited by other Boards from 2009 onwards.

The reasons for the loss of popularity are not immediately apparent. It deals with an issue of ever-increasing relevance: late filing of evidence in opposition/appeal proceedings. T 326/87 is still referred to in the introductory portion of the chapter on late-filing in opposition/appeal proceedings in the EPO Case Law Book (ed. 2016, IV.C.1.3).

In the opposition case underlying T 326/87 the opposition was initially rejected. One of the opponents/appellant filed - together with its Grounds of Appeal - a further prior art document in support of its inventive step arguments. The Board considered whether such late-filed evidence should be admitted into the procedure.

The Board stressed that parties to oppositon and appeal procedures have a general duty to present evidence at an early stage in the procedure. Boards and Opposition Divisions have the discretion not to admit late-filed evidence (reasons 2.1.2; Art. 114(2) EPC).

The Board stated that, if a late-filed document is sufficiently relevant for it to be admitted into the procedure, the case should normally be remitted - together with the new document - to the first instance (reasons 2.2).

The Board further held that the party that filed the evidence late should normally bear the additional costs incurred as a result of the late-filing, both its own costs and any additional cost incurred by the other party/parties (reasons 2.3).

In the specific case, the Board admitted the relevant late-filed document into the procedure. It found that the excuse presented by the opponent/appellant for filing the document late (the late-filed document being a patent document from the former GDR, and at the time not normally present in the available "manual search stock") was credible and acceptable. The Board nevertheless ordered that the opponent bears (only) 50% of the patentee's costs for the oral proceedings in appeal.

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Headnote:

1. The public's as well as the parties' interests require that opposition proceedings should be speedily concluded. This requirement clearly extends to appeal proceedings as well. Article 99(1) and Rule 55(c) EPC, read in the light of Rule 66 EPC, seek to ensure this by requiring the full presentation in the Notice of Opposition of the case that a patentee needs to meet in order to keep his patent in force (see paragraph 2.1.1 of the Reasons for the Decision).
2. Matter, e.g. facts and evidence, submitted for the first time in appeal proceedings may be disregarded by the Boards of Appeal as a matter of discretion and pursuant to Article 114(2) EPC, which sets the legal limit upon the inquisitorial duties of the Board under Article 114(1) EPC (see paragraph 2.1.2 of the Reasons for the Decision).
3. If the evidential weight of late-filed documents in relation to those already in the case ("their relevance") warrants their admission into the proceedings, the case should normally be remitted to the first instance (Article 111(1) EPC), particularly if the late-filed material puts the maintenance of the patent at risk (see paragraph 2.2 of the Reasons for the Decision).
4. In such a case, costs between the parties should be apportioned under Article 104 and Rule 63(1) EPC, in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness (see paragraph 2.3 of the Reasons for the Decision).
5. Costs should only be shared between the parties if there exist strong mitigating circumstances for the late filing of facts, evidence or other matter (see final sentence of paragraph 2.3 and paragraph 5 of the Reasons for the Decision).

The text of the decision is available here.