T 1002/92 - Admissibility of late-filed evidence (in opposition and appeal) - #10

Citation rank: 10
No. of citations: 218

T 1002/92 deals with the issue of late-filing of evidence, in particular late-filed documents.

In this case, the opponent appealed against the decision of the Opposition Division rejecting his opposition (which was based on Art. 100(a), Art. 52(2)(c), schemes, rules or methods for doing business, and Art. 56).

Claim 1 related to a "System for determining the queue sequence for serving customers" in a telephone system. During the proceedings before the Opposition Division, the opponent attempted unsuccessfully to introduce evidence concerning prior use of Ericson's "Triton" telephone system, more than two years after the grant of the opposed European patent.

In the annex to the summons to oral proceedings, the Board expressed its preliminary view, that the subject-matter of claim 1 was a technical system with co-operating technical components, in which the operation of the computing means solves a technical problem. It was thus regarded patentable under Art. 52(1). They also stated that that the documents files after expiry of the opposition period appeared to have no influence on the decision to be taken, and might therefore be regarded as inadmissible under Article 114(2) EPC. In response the appellant filed  further evidence.

During the oral proceedings the opponent argued again that the late-filed evidence should be admitted. The Board used the opportunity to clarify the principles that apply when assessing whether late-filed evidence is to be admitted or not. They noted that Art. 99(1), R. 55(c) EPC1973  (now R. 76(c) EPC) not only required that the Notice of Opposition includes

(i) the extent to which the European patent is opposed; and
(ii) the grounds on which the opposition is based; but also:
(iii) an indication of the facts, evidence and arguments in support of these grounds.

The Board quoted the Enlarged Board of Appeal in G 9/91 and G 10/91 where it is said that:

"Rule 55 (c) EPC only makes sense interpreted as having the double function of governing (together with the other provisions) the admissibility of the opposition and of establishing at the same time the legal and factual framework, within which the substantive examination of the opposition in principle shall be conducted" (G 9/91, point 6 of the reasons)

While G 9/91 and G 10/91 were mainly concerned with the admissibility of late-filed grounds for opposition (and held that late-filed grounds should only be admitted is prima facie relevant), the case under appeal in T 1002/92 was concerned with late-filed evidence. In this context, the Board stated:

"It would be illogical to have one criterion for the admissibility of late-filed new facts, evidence and arguments in combination with a fresh ground, and a different criterion for judging the admissibility of late-filed new facts, evidence and arguments in support of a ground of opposition already covered by the opposition statement." (T 1002/93, point 3.2 of the reasons).

The Board finally concluded:

"Thus following the principles set out in opinion G 10/91, as regards proceedings before the opposition divisions, late- filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings by the opposition division if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent in suit." (T 1002/92, point 3.3 of the reasons)

Regarding the proceedings before the Appeal Boards, T 1002/92 took an even stricter standpoint. They stated that - following the same principles, above -, the 

"'indication of the facts, evidence and arguments' presented in the notice of opposition in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the [Appeal] proceedings, if such new material is prima facie highly relevant in the sense that it is highly likely to prejudice maintenance of the European patent in suit." (point 3.4 of the reasons; underling added)

Regarding the late-filed evidence in the case at hands, the Board found that it was not sufficiently relevant to be admitted at the late stage in the proceedings.

The evidence was hence not admitted.

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Headnote:

1. In proceedings before the opposition divisions, late-filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent.
2. In proceedings before the boards of appeal, new facts, evidence and related arguments, which go beyond the "indication of facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board's discretion, if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent; and having regard also to other relevant factors in the case, in particular whether the patentee objects to the admissibility of the new material and the reasons for any such objection, and the degree of procedural complication that its admission is likely to cause.

The full text of the decision can be found here.