SONN Patentanwälte – IP Attorneys

EPO case law: Delayed in-house searches

If the opponent asserts a public prior use in the opposition proceedings at a late stage, there are good reasons not to differentiate in the admission decision between whether the opponent has conceded deliberately holding back this piece of prior art or whether he claims not to have searched earlier. Fairness and the obligation to advance proceedings require that an in-house search should also be carried out within the opposition period. If, therefore, the late search could not be explained by unforeseen developments in the proceedings which would have prompted reasonable parties to carry out a new search in a certain direction, it does not appear to be legally incorrect if the Opposition Division applies in its admission decision BoA case law established for abusively holding back known prior art (EPO BoA 9 May 2017, T 1955/13).