The practice of the Boards of Appeal of the European Patent Office (EPO) in recent years (following decision T 1067/08 (High-activity phytase/BASF); and discussed in detail in the Case Law of the Boards of Appeal, 7th Edition IV.C.1.3.3) has been not to review discretionary decisions made during first-instance proceedings. By way of example, if an Opposition Division has taken a decision not to admit a document (eg new evidence or a new claim request), the Board of Appeal will generally not overrule that decision if it concludes that the Opposition Division had the right to exercise its discretion.

This practice can potentially lead to complications in the opposition/appeal procedure, since there is a risk that the Opposition Division will not admit late-filed documents into the proceedings, and that the Board of Appeal will subsequently confirm that exercise of discretion – meaning that potentially relevant documents might be permanently excluded from the procedure.

This has led to tactical considerations on whether to file a new document in first-instance proceedings at a late stage or whether to hold it back and only file it on appeal. These considerations are further complicated by the fact that the Boards of Appeal (following decision T 936/09) are also moving toward a position of adopting a judicial review of the first-instance decision, rather than revisiting a case in its entirety. Thus, in decision T 936/09, the Board held that a key consideration for admissibility in appeal proceedings was whether the document (in this case a claim request) “could” have been filed in the first instance proceedings. In that case, the Board decided that the claim request was inadmissible, since it had not been filed during the opposition proceedings. In particular, the Board held that:

The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits and to obtain a judicial ruling on whether the decision of the opposition division is correct… Thus the appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition. Parties to first instance proceedings are therefore not at liberty to shift their case to the second instance as they please.

In light of this developing practice, there is a risk of parties being put in the wrong, whichever approach they take to late-filed documents: file during opposition proceedings and risk them being excluded by the Opposition Division (with the Board then refusing to revisit the matter); or delay filing until the appeal proceedings, only to have them refused by the Board, on the basis that the document ought to have been filed in first instance proceedings.

A recent decision (T 971/11) suggests that the Boards of Appeal may be recognising this dilemma. In that case, the opponent had filed a new document in the opposition proceedings two days before oral proceedings. The Opposition Division came to a view that the document was not only late-filed but was also not prima facie relevant. The document was therefore not admitted into the proceedings. The opponent-appellant then re-filed the document on appeal – and the Board admitted it into the proceedings. In particular, the Board stated that:

In the judgement of the present board, a document which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not, however, be held inadmissible for the sole reason that it was already filed before the department of first instance (and not admitted).

This appears to set a slightly different test from the current approach of merely looking at whether the Opposition Division exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. It appears that the Board in this case recognised the potential issues with the current approach to the exercise of discretion:

To impose such a limitation on the discretion conferred by Article 12(4) RPBA could even have the undesirable effect of encouraging a party to hold back a document during the opposition proceedings, only to present it at the appeal stage.

Decisions of the Boards of Appeal are binding only on the first instance from which they proceed and do not form a universally binding precedent. This decision nevertheless may prove useful to any party seeking a solution to the above-mentioned dilemma, particularly if it indicates a more general shift in the approach of the Boards as a whole.