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Under Art. 123(1) EPC, a European patent application or a European patent may be amended in proceedings before the EPO, in accordance with the Implementing Regulations. R. 137(3) EPC (former R. 86(3) EPC 1973) is of particular relevance.
R. 137(3) EPC stipulates that after receipt of the first communication from the examining division, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the examining division." It is therefore a matter of discretion for the latter.
In giving or withholding such consent, the examining division has to exercise its discretion responsibly and in accordance with the principles as set out in the decision G 7/93 (OJ 1994, 775) which, although made in relation to amendments made in the pre-grant stage, are of general validity. The Enlarged Board pointed out that in the exercise of its discretion under R. 86(3) EPC (now R. 137(3) EPC), an examining division is required to consider all relevant factors which arise in a case. In particular, it must consider both the applicant's interest in obtaining a patent which is legally valid in all of the designated states, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must balance these interests against one another (T 1982/07).
Once an examining division has exercised such discretion, a board of appeal should only overrule it if it comes to the conclusion either that the examining division did not exercise its discretion in accordance with the right principles or that it exercised its discretion in an unreasonable way and had thus exceeded the proper limit of its discretion (see T 237/96 with particular reference to G 7/93, OJ 1994, 775 and T 182/88, OJ 1990, 287).
In T 43/83 the board noted that according to R. 86(2) and (3) EPC 1973 an applicant was entitled to amend his application twice of his own volition. In the case at issue the applicant had not availed himself of these two opportunities. According to R. 86 (3) EPC 1973 he needed the consent of the examining division for further amendments, so that the examining division was fully entitled to decide on the application after the first communication and to refuse the application exclusively on grounds which had already been mentioned in their first communication, thus satisfying Art. 113(1) EPC 1973 as well.
In T 951/97 the board noted that whether or not consent was given was at the discretion of the examining division and depended on the facts of the individual case, on the nature of the grounds for seeking an amendment, and equally on the stage of the procedure. It was easier to secure an amendment at an earlier rather than at a later stage (see T 529/94 and T 76/89).
In T 1105/96 (OJ 1998, 249) the board noted that the admissibility of any main or auxiliary request which was filed after the reply to the first communication from the examining division was a matter within the discretion of the examining division (R. 86(3) EPC 1973). Such discretion must be exercised lawfully having regard to the relevant circumstances. In a case such as this, where an examining division had indicated that a further request in the form of an amended text for the main claim of an application would be allowable, it was difficult to imagine any circumstances in which it would be lawful for the examining division to deny the admissibility of such request, in the exercise of such discretion. Certainly, in the circumstances of the case at issue, the rejection in advance of such a further auxiliary request unless all preceding requests were abandoned was an abuse of procedure, an unlawful exercise of discretion under R. 86(3) EPC 1973 and thus a substantial procedural violation within the meaning of R. 67 EPC 1973.
In T 166/86 (OJ 1987, 372) the board held that under R. 86(3) EPC 1973, further amendments ‑ which included the submission of a separate set of claims for a given contracting state ‑ could only be made with the consent of the examining division (see Legal Advice No. 4/80, OJ 1980, 48). The examining division had to take the decision on whether to consent to the requested amendment after due assessment of the particular circumstances. In particular, this involved balancing the EPO's interest in speedy completion of the proceedings against the applicant's interest in obtaining a patent which was legally valid in all the contracting states. The examining division would not be able to refuse its consent to an amendment if, for good reasons, the applicant was only at that late stage in a position to request the amendment, or if the requested amendment was obviously essential for him and to take it into account would not appreciably delay the grant procedure. In the board's view, the latter situation was the case here.
In T 182/88 (OJ 1990, 287) and T 166/86 (OJ 1987, 372), the board decided that a separate set of claims submitted at a late stage in the proceedings was admissible under the particular circumstances. It added that the EPO's user-friendly reputation should clearly be excluded from consideration during the exercise of any discretion by the EPO. The showing of consideration towards parties before the EPO should not be confused with the proper exercise of discretion according to the law. It was also held that when a decision hinged on the exercise of discretion, the reasons should be given.
In T 872/90 the board held that neither the remark "the applicant has already once amended the claim" nor a reference to R. 86(3) EPC 1973 could be considered to represent a reasoning because, in the board's opinion, such statements solely constituted a reference to the power given to the examining division by the this rule.
In T 246/08 the examining division declared in a fax that no consent was given to further amendments under R. 86(3) EPC 1973. A similar declaration, stating that no further amendments were consented to, was reiterated in the minutes of the oral proceedings and in a subsequent communication, although the minutes contained a new argument. The board stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under R. 137(3) EPC is a discretionary power that has to be exercised after considering all the relevant factors of the specific case and balance in particular the applicant's interest in obtaining an adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary. Thus, in T 872/90 the then deciding board held that neither the remark "the applicant has already once amended the claim" nor a reference to R. 86(3) EPC 1973 could be considered as reasoning, because such statements solely constituted a reference to the power given to the examining division by the above rule. It followed that a refusal of consent to amend made in advance of any amendment being submitted could not be a reasonable exercise of discretion pursuant to R. 137(3) EPC. Indeed in the judgement of the board it was ipso facto a substantial procedural violation since it risked deterring an applicant from making an amendment which could not reasonably have been forbidden. The board made it clear that there was a world of difference between a pre-emptive formal declaration that no amendments would be admitted and advising the applicant that a discretionary power to permit or refuse amendment exists and would be exercised in the event that amendments were submitted.