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Under R. 71(4) EPC the applicant may, within the period laid down in paragraph 3, requests amendments under R. 137, paragraph 3 EPC, or the correction of errors under R. 139 EPC.
According to G 7/93 (OJ 1994, 775) the approval of a notified text submitted by an applicant pursuant to R. 71(3) EPC (former R. 51(4) EPC 1973) does not become binding. The criteria for accepting or refusing requests for amendment under R. 137(3) EPC (former R. 86(3) EPC 1973), or correction under R. 139 EPC (former R. 88 EPC 1973), have not been changed by the new R. 71 EPC (former R. 51 EPC 1973).
In T 375/90 the board noted the conditions defined by the boards of appeal limiting the extent of the discretion which may be exercised when applying R. 86(3) EPC 1973, where amendments were proposed by the applicant after issue of the R. 51(4) EPC 1973 communication:
The board noted that the Guidelines C-VI, 4.8 and 4.9 (old version) stated that the communication under R. 51(4) EPC 1973 did not constitute an opportunity for the applicant to call into question the outcome of the earlier procedure and only minor amendments would be considered within the period under R. 51(4) EPC 1973. Moreover, the applicant had to give good reasons for proposing the changes only at this stage of the proceedings. These rules of the Guidelines also reflected the call for the balance of interests applicable when judging cases falling under category (ii) mentioned above. It followed from the foregoing considerations that the examining division (or the board acting within its competence), when applying the provisions of R. 86(3) EPC 1973, was not completely free to deny any examination of the respective amended documents.
In T 171/85 (OJ 1987, 160) the applicants argued that the amendment requested was covered by R. 88 EPC 1973 and could therefore be made even after communication of approval under R. 51(4) EPC 1973. The board noted that it was true that, in the generally‑accepted view, corrections under R. 88, second sentence, EPC 1973, could be made at any time prior to the decision to grant. However, the board considered that in this particular case the requirement of R. 88, second sentence, EPC 1973, was not met. The board took the view that although correction under R. 88, second sentence, EPC 1973 was not possible, the documents nonetheless contained an inconsistency which should properly have been removed before the communication under R. 51(4) EPC 1973 was issued. If this was not done the precondition for grant under Art. 97(2) EPC 1973 that the application meet the requirements of the Convention appeared not to have been met. The board of appeal saw no reason why an inconsistency between claims or between claims and the description should not be removed, in agreement with the examining division and the applicant, even if the latter had communicated approval of the (faulty) text under R. 51(4) EPC 1973. Nor as a rule would it seem necessary to set aside and replace the communication under R. 51(4) EPC 1973; this need be done only if in a contracting state there might be a loss of rights under Art. 65(3) EPC 1973 unacceptable to the applicant.
In T 1/92 (OJ 1993, 685) the board found that if, according to R. 51(6) EPC 1973, it could not be established beyond doubt at the end of the time limit under R. 51(4) EPC 1973 that the applicant approved the text in which the examining division intended to grant the European patent, the examining division could not proceed to the grant of the patent and R. 51(5) EPC 1973 applied. The board further noted that, as the appellants' requests that their approval be disregarded and that the time limit for response to the R. 51(4) EPC 1973 communication be extended, were filed within the four‑month period given in that communication, they were entitled, in accordance with R. 51(5) EPC 1973 to make observations upon invitation by the examining division, should it not consent to the proposed amendments. This meant that, in any circumstance, the appellants were entitled to a response dealing with their requests. Under R. 51(4), last sentence, EPC 1973 they were further automatically entitled to the requested extension. R. 51(5) EPC 1973 expressly entitled the applicant to a response from the examining division to a request for amendment, if this request was filed on time. As a result, no final decision could be taken until that time limit had expired, and only then if there was unambiguous approval.
In T 999/93 the decision to refuse the application under R. 51(5), first sentence, EPC 1973 for lack of any approved text of the application (Art. 113(2) EPC 1973), was incorrect since the fact that the appellant never withdrew the main and first and second auxiliary requests as well as the appellant's letter of 6.4.1993 (disapproval of the text proposed for grant, but request for a decision on the main request) clearly showed that he indeed approved and proposed the text according to his higher‑ranking requests (see also R. 51(5), second sentence, EPC 1973). The decision would instead have required reasoning as to the substance of the main, first auxiliary and second auxiliary requests.
In T 237/96 the board held that the broadening of the scope of claim 1 requested by the applicant after receipt of the examining division's communication under R. 51(4) EPC 1973 so as to encompass one originally disclosed embodiment was not consistent with his previous submission that said embodiment was not part of the invention, raised new issues as to clarity and inventive step and was not supported by any argumentation in favour of the allowability of the amended claim. The board found that the examining division, in refusing to consent to the amendment under R. 86(3) EPC 1973, did not exercise its discretion in a wrong or unreasonable manner. Had it given its consent to the amended version of the claim, it would have been necessary to restart examination from the beginning, which, given the prima facie lack of clarity of the claim, would have led to a considerable delay.
In T 1066/96 the board noted that, pursuant to R. 51(5) EPC 1973, the examining division had the discretion not to consent under R. 86(3) EPC 1973 to amendments proposed by the applicant within the period set by the communication under R. 51(4) EPC 1973. However, in that case, R. 51(5) EPC 1973 explicitly provided that the examining division should, before taking a decision, request the applicant to submit his observations within a period it was to specify and should state its reasons for so doing. These provisions had to be seen in the light of the general rule laid down in Art. 113(1) EPC 1973, under which the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.
In this context, it was clear that further amendments could not be excluded wholesale in advance, but the discretion under R. 86(3) EPC 1973 had to be exercised on a case by case basis balancing the interests of the EPO and the applicant against one another (see G 7/93, OJ 1994, 775). Therefore, in exercising its discretion under R. 86(3) EPC 1973 in a negative way, an examining division could only refuse an application if, before issuing a decision, it had informed the applicant of the fact that the further amendments requested would not be admitted and of the reasons for not admitting said amendments, thereby taking due account of the applicant's reasons for such late filing of further amendments. If the applicant maintained its request and its counterarguments were not considered convincing by the examining division, the application had to be refused under Art. 97(1) EPC 1973, since it contained no claims to which the applicant had agreed.
In T 121/06 the examining division had issued a R. 51(4) EPC 1973 communication in which they had made changes to the text submitted by the appellants. In the annex to this communication document D4 was cited for the first time. The board noted that issuing a R. 51(4) EPC 1973 communication containing amendments was not foreseen in the EPC. However, according to the Guidelines for Examination C-VI, 15.1 (old version), an examining division could, instead of issuing an Art. 96(2) EPC 1973 communication, include amendments in the R. 51(4) EPC 1973 communication. Considering in particular that this communication triggered a phase of strict time limits for paying fees and filing translations, the amendments had to be such that the applicant could be reasonably expected to accept them. This procedure was thus only applicable as long as the amendments proposed by the examining division were minor. In the case at issue, however, the R. 51(4) EPC 1973 communication indicated substantial amendments to two independent claims based on a document never cited before. This was more than merely tidying up an examination result already agreed upon for final confirmation. The communication effectively initiated an entirely new examination phase, during which the applicant would generally not be expected to agree without presenting arguments. Thus, issuing a communication under R. 51(4) EPC 1973 in which amendments were proposed, which the applicant could not reasonably be expected to accept without further discussion, constituted a substantial procedural violation.
In T 1093/05 the board noted that to grant a patent in a text not approved by the applicant was in breach of Art. 97(2)(a) and 113(2) EPC 1973 and thus a substantial procedural violation. The board stated that in those circumstances it was established board of appeal and Enlarged Board of Appeal case law that an examining division was bound by its final decision on an application, which could be set aside only following an admissible, reasoned appeal (see G 12/91, OJ 1994, 285; G 4/91, OJ 1993, 707; T 371/92, OJ 1995, 324; T 1081/02; T 830/03). In view of this established case law, the board could not subscribe to the view expressed in T 971/06 that an erroneous decision was a nullity and therefore no appeal needed to be filed against it.
The board noted that the communication under R. 51(4) EPC 1973 was supposed to bring the substantive procedure to an end and should as a rule be based on a text approved by the applicant. If in this communication the examining division suggested amendments, it had to ensure that an approved text existed before it issued the grant decision – especially since no second communication under R. 51(4) EPC 1973 was issued if the applicant responded with amendments which the division considered allowable. To avoid this kind of problem, the division should make only such amendments in the communication under R. 51(4) EPC 1973 as it could reasonably expect the applicant to accept, as stipulated in the Guidelines for Examination in the EPO, Part C VI, 15.1 (old version). Otherwise, it must issue a communication under Art. 96(2) EPC 1973 (see also T 121/06).
In T 1064/04 the board stated that the principles in G 7/93 (OJ 1994, 775) could be considered generally applicable to new requests put forward at a late stage of the proceedings, where the applicant had already had at least one opportunity to amend the application and the examining division has already completed substantive examination of the application. The board found that the examining division had exercised its discretion in a reasonable way in accordance with the applicable principles. A late stage of the examination proceedings had been reached at the end of the oral proceedings, and any amendments thereafter fell to be considered under the principles derivable from decision G 7/93.