An EPO board of appeal observed that a careful opponent that is economically active in the same field as the patentee should search for internal evidence of public prior use before filing an opposition. If such internal evidence is filed belatedly, the fact the search was started only after filing the opposition per se is insufficient to make the evidence admissible, even if the late filing was due to a failure to see the need for such a search (a lack of care) rather than intent to withhold the evidence.

Case date: 09 May 2017
Case number: ECLI:EP:BA:2017:T195513.20170509
Court: European Patent Office (EPO), Board of Appeal

A full summary of this case has been published on Kluwer IP Law.



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  1. My proposal is to introduce a fee for late filed documents (maybe 1000 to 2000 Euro as a start) when there is no indication that they were withheld for strategic reasons or in bad faith. That would create an incentive to file documents as soon as possible but an “honest mistake” could still be corrected.

  2. Extraordinary comment from Parker. Is he being sarcastic? Is it a joke? Or is he serious?

    I mean, his suggestion legitimises late filing and introduces an expectation amongst late-filers that their doc must be considered. The higher the fee, the greater the expectation that the late filed doc is entitled to admission and full consideration.

    In other words, his suggestion will lead to the result exactly opposite than the one he intends, and yet more abusive behaviour by “zealous” legal representatives. I think that it’s the uncertainty, whether a late filed doc will be admitted at all, that keeps parties honest.

  3. @Peter Parker
    An unhelpful comment at best. If the worse comes to the worse, all means allowing to kill a patent will be used. That is a matter of fact.

    I do not speak about cases in which the claims have been amended by introducing features from the description. Requesting in such a situation a fee for late filing when the opponent has filed a document against such a claim, would be an obstruction to the legitimate defence of the opponent.

    If a fee should be paid, then also a fee for late filing of requests should be introduced. Omitting this possibility shows how much the proposal is not thought through.

    Case law has developed criteria which really try to make a difference between late filings which can be admitted although they are late filed, and those which can be disregarded as resulting from tactical games.

    In the present case, what was at stake is the late filing by an opponent of a public prior use by the opponent himself. This is really a case of abuse of procedure, and sentenced as such by the Boards, and this for a long time. Anything happening within the realm of an opponent should be brought up at the beginning of the opposition procedure. At least it should be introduced before the opposition division. If this is the case, then it will be admitted, see T 1476/14. If it has not been pursued before the opposition division, but brought to full bloom before the Board, then it will not be admitted, see T 460/13.

    On the other hand, if a document is really an absolute killer, it will be admitted, as patents which should not be maintained have to be revoked. In T 900/09, the opponent introduced a novelty killing document at the appeal stage. It was admitted, but the opponent had to pay the whole costs of the appeal procedure of the patentee, not just the cost for the oral proceedings.

    This confirms the stance above.

    It is difficult to understand what this decision and the corresponding blog on Kluwer have to do with your last philippic against the EPO. In blogs only decisions from the Boards or from courts are ever commented. Seeing a conspiracy in the absence of comments about a future decision of an opposition division, which is by no means final, can only stem from a weird mind.

  4. Maxdrei: the alternative is that a prima facie relevant prior use is without any discussion inadmissible when it is filed one day after the end of the opposition period and before the opposition division even looks into the matter. The result is that a patent is maintained while there is (inadmissible) evidence against patentability in the file. The only one profiting from this is a patent owner, the general public and the wider economy both lose. Having worked in a large company, I know that it is sometimes very difficult to find public prior use for various reasons (often employees not immediately recognize the relevance or misjudge things that happened 10+ year ago) and I do not think that the EPO and the Boards of Appeal should take such a strict stance without even looking into the merits on a case by case basis. We all (public and patent owner) deserve justice and not only simple “flow chart rulings”.

  5. I agree with Think and not with Peter. Let there be constraints too, on auxiliary requests filed at the last minute.

    Peter’s “One day after the end of the opposition period” is about 5 years (or more) after the A 8or WO) publication. How much time do you need, to trawl through company records?

    As Think points out, No Brainer Novelty Knock-out Docs get admitted, even when filed very late in the proceedings.

    In my view, the EPO finds a fine balance between reasonable certainty for the public and fair protection for the Applicant.

    And if the patentee survives at the EPO, to fight another day in court, well then it’s “see you in nullity proceedings” isn’t it?

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