Good Excuses, Bad Excuses

I have the impression that the EPO Boards of Appeal have an increasing tendency to not admit new documents or requests if the submitting party does not present good reasons for the late filing. Examples include e.g. T1914/08 (cf. item [2], where the Board asks for a "justification having a causal link to the present proceedings") or T1488/08 (cf. item[2.2] asking for "objective reasons").

It may be heretic but I would like to ask whether this approach is justified in view of the  nature of the proceedings before the EPO. The Boards of Appeal do clearly have the discretionary power not to admit new facts or requests. However, this power has to be exercised on the firm basis of the objectivity principle and the overriding interest in fair proceedings.

In my view, there are (at least) two principles limiting the discretionary power of the Boards. Firstly, the decison not to admit an amendment of the case should clearly not violate the right to be heard of the submitting party. Secondly, the boards (just as the opposition division) should not be forced to knowingly take wrong decisions. The first principle requires the admissibility of amendments constituting a reasonable reaction to events inside of or outside of the procedure and the second principle requires that documents of prima facie relevance should be admitted.

Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

What about the excuse? The complexity of the submitted subject-matter is clearly independent of the quality of the excuse.

Further, the procedure will not be the more economical the better the excuse for the late filing is. Rather, the procedural economy allows for the non-admission of amendmens which would clearly not change the result of the procedure (e.g. the admission of the allegedly novelty-destroying Document D99 if the Board holds that the patent is not novel over D1 already). Furhter, procedural economy should not be mixed up with the Board's comfort.

Finally, we are left with the "current state of the proceedings". In my view, this means that the Boards should shift the point of equilibrium of their balance towards the non-admission side in the later the stages of the proceedings. However, this may affect the mechanism of the balance but the weights to put on the balance should remain unchanged.

The fact that the amendment is a direct response to new points raised by the other party may support as a positive weight the admissibility of an amendment for reasons of fairness and for the preservation of the the right to be heard. However, in my view, the lack of such reasons should not constitue a "negative" weight on the balance unless the Board has additional evidence supporting the suspicition that the late-filing is the result of procedural abuse. Procedural abuse is a severe accusation which should not be raised without by the Boards without very good grounds.

In view of these considerations, the reasons for not admitting amendments to the case mentioned in T1488/08 appear to be based on a doubtful exercise of discretion. Here is what the Board has to say:

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case.(Emphasis added).

 If this way of exercising the discretion was correct, this would imply that every amendment which is determined by procedural tactics is inadmissible. The fact that the prima facie relevance is checked only "for the sake of completeness" and not at the first place implies that this board has set its prioprities in a questionable way. The prima facie test would actually have been entirely sufficent to reject the new grounds.