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CHAPTER VI EXAMINATION BY THE EPO OF ITS OWN MOTION; FACTS OR EVIDENCE NOT SUBMITTED IN DUE TIME; OBSERVATIONS BY THIRD PARTIES 1. Examination by the EPO of its own motion 1.1 General remarks "In proceedings before it, the EPO shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought." This principle of examination by the EPO of its own motion must be complied with by the competent department during all proceedings pending before it. If, therefore, once proceedings have been initiated, e.g. once a valid request for examination has been filed or an admissible notice of opposition has been filed (although it may subsequently be withdrawn) there is reason to believe, e.g. from personal knowledge or from observations presented by third parties, that there are facts and evidence not already considered in the proceedings which in whole or in part prejudice the granting or maintenance of the European patent, such facts and evidence must be included in those examined by the EPO of its own motion pursuant to Art. 114(1). See D-V, 2 for the extent of the substantive examination of the facts and evidence in opposition proceedings. »»Art. 114(1) 1.2 Limits on the obligation to undertake examination However, the obligation to undertake such examination should be kept within limits in the interests of procedural expediency. For example, in opposition proceedings, an offer to prove that an alleged public prior use took place should not be taken up if the opponent making such an allegation has ceased to participate in the proceedings and the necessary evidence cannot be easily obtained at a reasonable cost. The unity of the subject-matter of the European patent may not be examined in opposition proceedings (see D-V, 2.2, penultimate paragraph). 2. Facts or evidence not submitted in due time (For the situation where submissions of the parties are filed late in respect of the date indicated in the note to the summons to oral proceedings, pursuant to Rule 71a(1), primarily E-III, 8.6 applies). "The EPO may disregard facts or evidence" (e.g. publications) "which are not submitted in due time by the parties concerned." This also applies to grounds for opposition not submitted in due time, together with supporting facts and evidence in opposition proceedings. According to Decisions G 1/95 and G 7/95 (see OJ 11/1996, 615 and 626), Art. 100(a) does not constitute one single ground of opposition, but has to be considered a collection of individual grounds of opposition, i.e. individual legal bases for objection to the maintenance of a patent. This applies not only to distinctly different objections as e.g. subject-matter which is not patentable (Art. 52(2)) as compared to subject-matter which is not capable of industrial application (Art. 57), but also to an objection for lack of novelty as opposed to an objection for lack of inventive step. »»Art. 114(2) In deciding whether to admit the facts or evidence not filed in due time their relevance to the decision, the state of the procedure and the reasons for the belated presentation are to be considered. If examination of the late-filed ground of opposition, the late filed facts or evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such ground, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated presentation. In that case the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84, OJ 10/1988, 372). Note, however, the limits on the obligation to undertake further examinations in VI, 1.2. Otherwise it should inform the party concerned, at the latest in the decision that the facts and evidence were not submitted in due time and, since they are not relevant to the decision, will be disregarded pursuant to Art. 114(2). On the apportionment of costs possibly resulting from the late filing of facts and evidence see D-IX, 1.4. The latest date up to which submissions can at all be considered is the date on which the decision is handed over to the EPO's internal postal service for transmittal to the parties (see Decision G 12/91, OJ 5/1994, 285). The above applies in written proceedings; in oral proceedings submissions can only be considered up to the pronouncement of the decision (see III, 9). 3. Observations by third parties and examination thereof "Following the publication of the European patent application" under Art. 93, "any person may present observations concerning the patentability of the invention. Such observations must be filed in writing and must include a statement of the grounds on which they are based. That person shall not be a party to the proceedings before the EPO." The statement of grounds must be presented in German, English or French language. Although receipt of the observations is acknowledged to the third party, the EPO does not inform him of the further action taken by the Office in response to his observations. »»Art. 115(1) The observations are communicated to the applicant or proprietor without delay and he may comment on them. If, in whole or in part, they call into question the patentability of the invention, they must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated, i.e. they must be introduced into the proceedings. If the observations relate to alleged prior art available other than from a document, e.g. from use, this should be taken into account only if the alleged facts are either not disputed by the applicant or proprietor or established beyond reasonable doubt. Observations by third parties received after the conclusion of proceedings will not be taken into account and will simply be added to the file. »»Art. 115(2)

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