Rule 116 EPC: the final date before oral proceedings
Rule 116 EPC governs the preparation of oral proceedings before the EPO. Under Rule 116(1) EPC, the summons fixes a final date for making written submissions; submissions filed after that date may be disregarded at the department’s discretion under Article 114(2) EPC. This guide sets out what the rule requires and tracks how the Boards of Appeal have read it over time.
What Rule 116 EPC says
Rule 116 EPC sits behind the right to oral proceedings under Article 116 EPC. When the EPO summons the parties, Rule 116(1) EPC sets a final date by which written submissions and amendments should be filed; new facts and evidence presented after that date need not be considered unless they are admitted because the subject of the proceedings has changed. In examination, Rule 116(2) EPC applies the same logic to amended application documents. The rule does not create a right to have late material admitted: it marks the point after which admission becomes discretionary.
The final date under Rule 116(1)
The final date is set in the summons, normally one month before the oral proceedings. It is a date for making submissions, not a procedural time limit that ends the proceedings if missed, and it is not extended merely by filing something after it. Submissions and amendments made in good time before the final date are, as a rule, taken into account; those made after it are treated as late and are admitted only if the deciding body exercises its discretion in their favour (Rule 116(1) EPC).
How the Boards of Appeal apply Rule 116 EPC
A date under Rule 116 EPC is not a safe harbour. The discretion to disregard late submissions rests on Article 114(2) EPC, and on appeal it is further shaped by the Rules of Procedure of the Boards of Appeal. The Boards ask whether the material could have been filed earlier, whether it is prima facie relevant, and whether admitting it would run counter to procedural economy. The decisions below show how that assessment has developed, and where individual Boards have drawn the line differently. Each summary is the Board’s own catchword or headnote (Rule 116 EPC).
Rule 116 EPC in the case law
Rule 116 EPC has been cited in over 117 published Board of Appeal decisions. The most substantive recent ones, most recent first:
- T 1731/23Board 3.5.01
There is no established principle that submissions filed before the date set under Rule 116 EPC are generally admissible, just as there is no principle saying that a submission filed after that date is automatically inadmissible. It is rather established case law that the opposition division has a discretion (not) to admit amendments filed after the period specified in the communication under Rule 79(1) EPC (see the Case Law Book, 11th edition, IV-C 5.1.4.a) and b)). (See point 12 of the reasons)
- T 0691/24Board 3.5.05
As to the applicability of the criteria of "late-filed" and "lack of convergence" to admittance decisions in opposition proceedings, see points 1.1.3 to 1.1.6 of the Reasons.
- T 1398/23Board 3.4.02
Wird die Neuheit eines beanspruchten Gegenstands infolge eines von der Einsprechenden am letzten Tag der Frist gemäß Regel 116(1) EPÜ erhobenen Einwandes mangelnder Neuheit in Bezug auf ein in diesem Zusammenhang erstmals erwähntes Dokument vorweggenommen, so ist der Patentinhaberin spätestens in der mündlichen Verhandlung vor der Einspruchsabteilung Gelegenheit zu geben, auf diesen neuen Einwand mit einem neuen, noch nicht im Verfahren diskutierten Anspruchssatz zu reagieren. In diesem Fall liegt die Zulassung eines neuen Anspruchssatzes nicht im Ermessen der Einspruchsabteilung. Siehe Entscheidungsgründe, Punkt 2.3.5.
- T 1913/21Board 3.3.04
1. The rationale of the Enlarged Board of Appeal's decisions G 2/88 and G 6/88 is limited to claims directed to (new) non-medical uses of a known compound for a particular purpose, rather than to processes for production within the meaning of Article 64(2) EPC. In order to be a limiting technical feature of the claim, the (new) purpose must relate to the use rather than to a property of the product (see Reasons 15). 2. Claims which when correctly construed are directed to processes resulting in products referred to in Article 64(2) EPC are not subject to the special treatment established under G 2/88 and G 6/88, even if they contain the word "use" (see Reasons 9). 3. Where an invention relates to a new technical effect of a physical entity that can only occur as part of a process for the production or manufacture of a product, such that it is inextricably linked to and cannot occur in isolation from the production process, a claim directed to the "use" of the physical entity to achieve that effect must be regarded as directed to the production process per se (see Reasons 23). 4. For the criteria to be used in deciding whether auxiliary requests were admissibly raised in opposition proceedings, in the sense of Article 12(4) RPBA, see Reasons 38 to 52.
- T 0307/22Board 3.2.04
Ein von der Einspruchsabteilung nicht zugelassenes Dokument kann in der Beschwerde durchaus zugelassen werden, wenn die Vorinstanz verkannt hat, dass der beanspruchten Erfindung nur eine Teilpriorität zukommt und das erstinstanzlich nicht zugelassene Dokument als Stand der Technik für die Frage der erfinderischen Tätigkeit der nicht prioritätsberechtigten Alternativen des unabhängigen Anspruchs relevant ist.
- T 0364/20Board 3.3.02
To judge whether a claim request was admissibly raised in opposition proceedings within the meaning of Article 12(4) RPBA 2020, a board has to decide whether the opposition division should have admitted the claim request, had a decision on admittance been required. If so, the claim request was admissibly raised (reasons, point 7). As a rule, claim requests filed in reply to the notice of opposition within the time limit set under Rule 79(1) EPC should have been admitted by the opposition division and were thus admissibly raised. Not admitting these claim requests and thus considering them not to have been admissibly raised must be limited to truly exceptional situations (reasons, points 7.1.2 and 7.1.3). Whether or not a claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is to be considered filed in due time depends on whether this request was submitted in direct and timely response to a change to the subject of the proceedings introduced by the opponent or the opposition division. Opposition divisions have the discretion to not admit any late-filed claim request and therefore the board has the discretion to consider a late-filed claim request not to have been admissibly raised (reasons, points 7.2.4 and 7.2.6). The criteria generally used by the boards of appeal when exercising their discretion to admit or not a party's submission in appeal under the Rules of Procedure 2020 may also be considered when deciding whether or not a late-filed claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC should have been admitted by the opposition division and was thus admissibly raised. However, when taking this decision, in view of the administrative character of opposition proceedings, these criteria should be used by the boards in a more lenient way than for a party's submission filed during appeal proceedings. In fact, to properly defend its patent, a patent proprietor must in principle be permitted to redefine its fallback positions in terms of auxiliary claim requests also at a late stage of opposition proceedings (reasons, points 7.2.7 and 7.2.10).
- T 0714/20Board 3.5.06
The principles expressed in Article 12(6) RPBA 2020 for the admittance of non-maintained or non-admitted requests may be considered in the exercise of discretion to admit amendments based on such requests under Article 12(4) RPBA 2020.
- T 1776/18Board 3.3.09
1.) Article 114(2) EPC provides a legal basis for disregarding claim requests which are not submitted in due time (Reasons 4.5.1-4.5.11). 2.) A claim request which is filed in opposition proceedings after the date set under Rule 116(1) EPC is not submitted in due time within the meaning of Article 114(2) EPC (Reasons 4.6.1-4.6.10). 3.) Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. As a rule, this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. However, if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, the Opposition Division's discretion not to admit that claim request may effectively be reduced to zero (Reasons 4.7.1-4.7.8).
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Chat about Rule 116Frequently asked questions
The final date is the date fixed in the summons to oral proceedings by which written submissions and amendments should be filed, normally one month before the hearing (Rule 116(1) EPC). Material filed after it counts as late.
Yes, but they are treated as late. After the final date under Rule 116(1) EPC, amendments and new submissions are admitted only at the discretion of the deciding body, which draws on Article 114(2) EPC and, on appeal, the Rules of Procedure of the Boards of Appeal.
The final date is set by the department in the summons and is not extended merely by filing after it. A party needing more time must request a postponement of the oral proceedings on serious grounds; the final date moves only if the proceedings themselves are rescheduled (Rule 116(1) EPC).