The Limits of Discretion: T 1211/24 on Excluding Admitted Evidence Under G 7/93
Can a Board of Appeal exclude late-filed evidence that the opposition division already admitted? T 1211/24 confirms that discretionary admission decisions are fully subject to judicial review under the G 7/93 standard.
Picture defending a European patent in opposition where the division admits late-filed documents that merely recycle the teaching of evidence it had previously rejected. When the resulting revocation is appealed, the opponent might confidently argue that because the decision was based on those admitted documents, the Board of Appeal has no legal basis to retroactively exclude them. This exact procedural tension reached the Board in T 1211/24, prompting a deep dive into the limits of appellate review over discretionary first-instance decisions.
Does the Board have the power to exclude evidence admitted by the opposition division?
The opponent argued that under the Rules of Procedure of the Boards of Appeal, evidence forming the basis of the appealed decision automatically enters the appeal proceedings. Citing previous case law, they contended that no legal basis exists to exclude such admitted documents. The Board disagreed, anchoring its reasoning in Article 111(1) EPC and Article 107 EPC. Following the principles established in G 7/93, the Board confirmed it has both the power and the duty to review discretionary procedural decisions.
If an opposition division admits late-filed evidence by applying the wrong principles or acting unreasonably, that decision can be overturned. The Board explicitly rejected the notion of a procedural asymmetry where only decisions refusing to admit evidence are subject to review. A decision to admit late-filed evidence under Article 114 EPC adversely affects the patent proprietor just as a refusal affects the opponent, making both scenarios fully subject to judicial review.
Why did the Board find the admission of documents D38 and D39 unreasonable?
The opposition division had admitted documents D38 and D39, filed four years after the notice of opposition, judging them prima facie relevant. The Board scrutinized this assessment. Document D38 was a review article on the benefits of ACE inhibitors in diabetes, and D39 was a meta-analysis of clinical trials. Crucially, neither document mentioned the claimed dipeptide AP.
To find these documents relevant for inventive step, the skilled person would have to make multiple assumptions: shifting the disease focus, searching for alternative peptide compounds, assuming a common mechanism of ACE inhibition, and selecting the specific dipeptide AP from other prior art. The Board held that an inventive step objection requiring such a complex, multi-step chain of reasoning cannot be considered prima facie relevant (reasons 55). Consequently, the opposition division exercised its discretion unreasonably by admitting them.
Did the exclusion of evidence violate the opponent's right to be heard?
After the Board excluded D38 and D39, the opponent filed an objection under Rule 106 EPC, arguing a violation of Article 113(1) EPC. The opponent claimed it was unfair to exclude their documents while simultaneously admitting the patent proprietor's late-filed auxiliary request.
The Board dismissed this objection, clarifying that procedural fairness does not mean balancing the number of admitted requests between parties. Each request must be judged independently on its applicable legal principles. Because the opponent had ample opportunity to present arguments on the admission of the documents, the right to be heard was fully respected.
What must practitioners change when relying on admitted late-filed evidence?
Relying on late-filed evidence that an opposition division admits is not a safe harbour. If the admission relied on a stretched definition of prima facie relevance, a Board of Appeal may exclude the evidence. When defending the admission of late-filed documents on appeal, practitioners must be prepared to show that the opposition division applied the correct principles reasonably.
Furthermore, opponents should maintain backup inventive step attacks based on timely filed prior art, rather than abandoning them entirely once a late-filed document is admitted. In this case, the opponent dropped their original attack based on document D7, leaving them with no substantiated inventive step objection once D38 and D39 were excluded. The Board refused to remit the case to the opposition division for a fresh examination of D7, resulting in the maintenance of the patent.
Sources
Further Reading
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