T 0156/84 - Ex officio examination - #64

Citation rank: 64
No. of citations: 78

T 156/84 dealt with the principle mentioned in Art. 114(1) EPC that the EPO examines the facts of the case "of its own motion" (ex officio examination), and its conflict with Art. 114(2) EPC allowing the EPO to disregard late-filed facts and evidence.

In the underlying opposition case, the opposition division (OD) had disregarded documents D4 and D5, solely because they were filed after expiry of the 9 months opposition period. The OD justified the non-admittance of the documents into the procedure by stating that the nine-month period was sufficiently long and the two citations had been publicly available for a long time, as a matter of fact since 1933 and 1978 respectively.

The Board found that this conduct was not proper, taking into account the principles expressed in Art. 114(1) EPC. The Board stated:

"The Board considers that the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the possibility of disregarding facts or evidence not submitted in due time provided for in Article 114(2) EPC. This is evident from the wording of both provisions. That of Article 114(1) EPC: "ermittelt" in the German text, "shall examine" in the English and "procède" in the French, expresses an obligation whereas Article 114(2) EPC implies a discretion - the German text choosing the words "braucht nicht zu berücksichtigen", the English text "may disregard" and the French "peut ne pas tenir compte". The wording alone thus makes it clear that the provision in paragraph 1 has priority over that in paragraph 2." (point 3.4 of the reasons)

This does not only apply to examination proceedings (which may be regarded as being "100% ex-officio") but also in inter partes opposition and appeal proceedings. The Board stated in this regard:

"Even in inter partes proceedings before the EPO, which is what opposition proceedings are, account must be taken not only of the interests of the parties involved; the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid. This is the real reason for the introduction of the principle of examination by the Office of its own motion in Article 114(1) EPC " (point 3.5 of the reasons)

T 156/84 says that, in order to saveguard the interests of the public, an OD or Appeal Board cannot disregard late-filed documents for the sole reason that they are late filed. The OD and Boards have to examine objectively the relevance of the citation introduced late into the proceedings and have to communicate the results to the parties at least in its decision.

Since this was not done by the OD in the underlying case, the case was remitted to the OD for further examination, taking D4 and D5 into account.

Remark: T 156/84 is a rather early decision on the principle of ex officio examination. Nowadays, G 10/91 ("Examination of oppositions/appeals") should be referred to regarding the proper amount of ex officio examination in opposition and appeal proceedings at the EPO.

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Headnotes:

1. The principle of examination by the EPO of its own motion (Article 114(1) EPC) takes precedence over the possibility of disregarding facts or evidence not submitted in due time. This follows from the EPO's duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid.
2. The EPO has to examine the relevance of citations introduced late into the proceedings and has to communicate the results to the parties at least in its decision. No final decision on the opposition can be taken until such an examination has been performed.
3. Late-filed documents can be designated as not material by the EPO without having to give detailed reasons as it does in the case of citations referred to in due time.
4. Late-filed documents are not deemed not to have been submitted in due time simply because they have not been submitted during the opposition period; if careful preparation of the opposition proceedings would have revealed the late-filed documents earlier, it is the opponent's task to set out the circumstances that prevented him from mentioning the documents earlier.

The full text of the decision can be accessed here.