Irrespective of a third party's legal status, the principle that the EPO must examine the facts of its own motion in first-instance administrative proceedings does not have the same legal importance in judicial appeal proceedings, in particular in inter partes proceedings (G 9/91 and G 10/91, OJ 1993, 408, 420).
In T 1756/11 the board observed that the boards usually have to disregard late-filed third-party observations in opposition appeal proceedings of their own motion, unless they relate to amendments to the claims or other parts of the patent made during the opposition or appeal proceedings. In that case, a board can, under certain circumstances, in the course of examining these amendments either disregard a third party's late-filed submission or, where appropriate, admit it into the proceedings and consider it at its discretion; see Art. 12(4) RPBA and Art. 13(1) RPBA and Art. 13(3) RPBA.
In T 1224/09 a third party had submitted documents D53 to D55 (Japanese patent applications) at the start of the appeal proceedings. The board considered documents D53 to D55 to be prima facie relevant, as they had led to the refusal of the corresponding application before the Japanese Patent Office. The board stated that third party observations could be submitted at any time as long as proceedings were pending. Admitting and considering such observations, however, was an issue to be decided by the competent department of the EPO. In the case of the boards of appeal, the principles set out in Art. 13 RPBA seemed to be a reasonable basis on which the discretion to admit the third party observations was to be exercised, i.e. in view inter alia of the complexity of the new subject-matter, the current state of the proceedings, the need for procedural economy and, where oral proceedings were arranged, whether the board or the other parties could reasonably be expected to deal with the third party observations without adjournment of the oral proceedings. The board decided to admit documents D53 to D55 into the appeal proceedings.
In T 637/09 the board stated that the admission into the appeal proceedings of third-party observations filed in the course of these proceedings is at the board's discretion. When exercising its discretion the board took into account that it should not accord the third party within the meaning of Art. 115 EPC more favourable treatment than would be given to an actual party seeking to introduce such submissions at that stage of the proceedings. The third-party observations filed shortly before the oral proceedings were not admitted into the proceedings since their admission would have accorded the third party more favourable treatment than would have been given to an actual party.
In T 953/02 the respondent had challenged the submission under Art. 115 EPC 1973 because of a signature which was deficient, i.e. not that of a natural person. The submission by the third party was filed substantially less than one month before the oral proceedings. The board did not admit it into the proceedings. This also removed any need to consider the arguments set out in the respondent's letter or the literature enclosed.
In T 771/13 the observations were received by the EPO some days before oral proceedings. The novelty objection was not based on state of the art under the EPC. Moreover, the remaining documents and objections were not prima facie more relevant than those raised previously. Consequently there was no need to decide whether or not to admit these late-filed observations.
The observations under Art. 115 EPC were filed more than 1 1/2 years before the oral proceedings so that the parties and the board had sufficient time to consider the document. In fact, appellant I had already reacted in the written proceedings to the submission of the third party by filing amended claims and a declaration. The board had also notified the parties that it considers document D 27 to be relevant. None of the parties had requested that the submission of the third party be disregarded. Thus, the board decided to admit the submission of the third party into the proceedings (T 458/07).
Date retrieved: 30 December 2018