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Under R. 71(5) EPC (former R. 51(6) EPC 1973), if the examining division does not consent to an amendment or correction requested under paragraph 4, it shall, before taking a decision, give the applicant an opportunity to submit, within a period to be specified, his observations and any amendments considered necessary by the examining division, and, where the claims are amended, a translation of the claims as amended. If the applicant submits such amendments, he shall be deemed to have approved the grant of the patent as amended. If the European patent application is refused, withdrawn or deemed to be withdrawn, the fees for grant and printing, and any claims fees paid under paragraph 6, shall be refunded.
Enlarged Board of Appeal decision G 7/93 (OJ 1994, 775) related to an earlier version of R. 51(6) EPC 1973. Nevertheless the criteria set out in that decision still apply to the procedure under R. 71(3) to (5) EPC.
In G 7/93 the Enlarged Board stated that the wording in R. 86(3) EPC 1973, "No further amendment may be made without the consent of the examining division", simply meant that the examining division might or might not give its consent to a request for amendment by the applicant. However, since the underlying object of a R. 51(6) EPC 1973 (earlier version) communication was to conclude the granting procedure on the basis of the approved text, a request for amendment which was received by an examining division after such a communication has been issued should be considered in a different way from a similar request for amendment received at a much earlier stage in the overall examination procedure, and in particular before approval by the applicant of a notified text. Such a request should be considered in the context of the very late stage in the pre‑grant procedure at which it had been made, and against the background that the examining division had already completed its substantive examination of the application, and that the applicant had already had at least one opportunity to amend the application. Against such a background, allowing a requested amendment after the issue of a R. 51(6) EPC 1973 communication wiould be the exception rather than the rule. Nevertheless, the question remained in what kind of circumstances it would be appropriate to make an exception to the normal rule.
In response to a referral in T 830/91 (OJ 1994, 728), the Enlarged Board of Appeal looked initially at the question of the admissibility of amendments to the patent application after a R. 51(6) EPC 1973 communication. Decisions T 1/92 (OJ 1993, 685) and T 675/90 (OJ 1994, 58) had differed in their interpretation of this point.
The Enlarged Board of Appeal concluded that the approval of a notified text submitted by an applicant pursuant to R. 51(4) EPC 1973 was not rendered binding by virtue of a communication being issued in accordance with R. 51(6) EPC 1973. Even following the issue of such a communication and until the issue of a decision to grant the patent, it was left to the discretion of the examining division under R. 86(3) EPC 1973, second sentence, whether or not to allow amendment of the application.
In the Enlarged Board's view, when considering the possible circumstances when it might be appropriate for an examining division to exercise its discretion under R. 86(3) EPC 1973 to allow an amendment after issue of a R. 51(6) EPC 1973 communication, it should be borne in mind that a request for amendment at that stage might arise either as a result of a realisation by the applicant of the need for amendment, or as a result of a point raised by the examining division, or as a result of consideration of observations made by a third party pursuant to Art. 115 EPC 1973. In any of these circumstances, the discretion to allow amendment should be exercised according to the same principles. Of course, an objection should only be raised by an examining division at that stage of the proceedings if it was prepared to allow amendments to meet the objection. When exercising its discretion following the issue of a R. 51(6) EPC 1973 communication, an examining division had to consider all relevant factors. In particular it had to consider and balance the applicant's interest in obtaining a patent which would be 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. Having regard to the object of a communication under R. 51(6) EPC 1973, which was to conclude the grant procedure on the basis of the previously approved text, allowance of a request for amendment at that late stage in the grant procedure would be the exception rather than the rule.
A clear example of an exceptional case when it might be appropriate to allow amendment was, in the Enlarged Board's view, where the applicant requested separate sets of claims to be substituted in respect of designated states which had made reservations under Art. 167(2) EPC 1973. Similarly, other minor amendments which did not require the re-opening of substantive examination and which did not appreciably delay the issuing of a decision to grant the patent might be allowable after a R. 51(6) EPC 1973 communication had been issued.
As to the second question referred to it, of whether the EPO was obliged to consider reservations under Art. 167(2) EPC 1973 as constituting requirements of the Convention which had to be met in accordance with Art. 96(2) EPC 1973, the Enlarged Board of Appeal held that, under Art. 96(2) EPC 1973, an examining division was required to consider whether the application or the invention to which it related met the requirements of the Convention. When a contracting state to the Convention made a reservation under Art. 167(2) EPC 1973 it reserved the right to make provisions in its national law on the matters set out in Art. 167(2) EPC 1973. Such provisions of national law were clearly not "requirements of the Convention" within the meaning of Art. 96(2) EPC 1973.
Thus G 7/93 supersedes on this point decisions T 860/91 and T 675/90, in which it was held that the discretionary power conferred by R. 86(3) EPC 1973 to allow amendments no longer existed after a R. 51(6) EPC 1973 communication had been issued.