Court of Appeal Luxembourg draws clear line on admissibility of late-filed evidentiary documents (UPC_CoA_71/2025)

The Court of Appeal (CoA) confirms that an overly strict approach to the admissibility of new arguments, facts and evidence should not be taken when assessing a claimant’s Defence to the Application to amend the patent. However, such Defence does not generally provide the claimant with an opportunity to file new evidence against the patent as granted. In this decision, the CoA draws a clear line on when late-filed evidentiary documents are to be admitted and when not.

In the first instance, in its Reply to the Statement of defence, the claimant relied on new prior art documents not only in relation to the proposed amendments, but also to claim 1 as granted. Some of these documents were admitted, and others not directly responding to arguments raised by the defendant were excluded from consideration. The defendant argued that the admitted prior art documents should not have been admitted as they should have been filed in the Statement for revocation.

The CoA found that the Central Division as the Court of First Instance was correct in both setting out and applying the legal standard for admittance of late-filed evidentiary documents. 

The CoA emphasizes that with regard to the content of a Defence to an Application to amend the patent under Rule 32 RoP, a distinction must be made between objections to the proposed amendment of the patent and objections to the patent as granted.

For objections to the proposed amendments, the CoA confirmed that, where appropriate in view of the proposed amendments, the claimant’s reply may contain submissions including new attacks and prior art in accordance with Rule 32.2 RoP and Rules 44(d) to (h) RoP.

As to objections against the patent as granted:

First, the decision confirms the existing case law (CoA 456/2024, “OrthoApnea”) that specific new arguments may be admitted under specific circumstances of the case (see para. 27). This view is supported by the wording of Rule 44(f) RoP which requires only an “indication” of the facts relied upon, in contrast to, say, a complete argument, thus implying a less strict application.

Second, the decision emphasizes that in response to the Statement of defence, the claimant may be allowed to introduce new facts and evidence (see para. 28). The CoA mentions as examples evidence that serves to support arguments regarding the common general knowledge of the skilled person which have already been presented by the claimant, or evidence that serves to rebut submissions by the defendant in this regard. The Court of Appeal derives this from a fair application of the principle of adversarial proceedings.

It follows from the decision that a claimant should carefully consider whether the Defence to the Application to amend the patent relates to the patent as granted or to a proposed amendment. Where the Defence concerns the patent as granted, new arguments should be clearly related to the facts already indicated in the Statement for revocation or meet the circumstances outlined in OrthoApnea; in the case of new facts and evidence, a connection should be established to a point that was either already contained in the Statement for revocation or was raised by the defendant in the Statement of defence.