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Once a decision to grant has been issued, the European examination procedure is closed and the outcome is binding on the applicant and the EPO in so far as no further amendments - save for corrections under R. 140 EPC (R. 89 EPC 1973) - may be made. However, if an opposition is filed, the patent in suit may be amended. Although patent proprietors are not free to make such amendments at their discretion, because opposition proceedings are not a continuation of the examination proceedings, they are entitled under R. 80 EPC (R. 57a EPC 1973) - without prejudice to R. 138 EPC (R. 87 EPC 1973) - to respond to an opponent's objections by amending the description, claims and drawings, provided that the amendments are occasioned by grounds for opposition specified in Art. 100 EPC (substance unchanged), even if the respective ground has not been invoked by the opponent. The new provisions also apply to all proceedings pending on that date. R. 80 EPC is thus applied as lex specialis to amendments in opposition proceedings.
Any amendments made in opposition proceedings must be occasioned by the grounds for opposition specified in Art. 100 EPC 1973 (substance unchanged). It is not necessary, however, for the ground for opposition in question actually to be invoked by the opponent. For example, in opposition proceedings admissibly brought on the grounds of non-patentability, the patent proprietor can also submit amendments to remove added subject-matter (Guidelines D-IV, 5.3 - old version). In opposition proceedings, the patent proprietor may likewise file one or more alternative sets of claims on which the opposition division may base a decision to maintain the patent in amended form, listing those claims in order of preference (EPO Legal advice No. 15/05 (Rev.2), OJ 2005, 357).
In T 1149/97 (OJ 2000, 259), the board took the view that the relevant EPC provisions could be regarded as reflecting the formal aspects of a procedural cut-off effect associated with the grant of a patent in the opposition phase. The grant of a patent in such a phase did not constitute a general cut-off point in that the patent had to be defended in unamended form, but amendments were admissible only as a reaction to actual or possible grounds of opposition or to conflicting earlier national rights. Compliance with the restrictions imposed by R. 57a and 87 EPC 1973 was thus a prerequisite for any further considerations as to possible substantive cut-off effects for amendments after grant during opposition proceedings. Such substantive cut-off effects, in the board's view, could only be based on Art. 123(3) EPC (see also Chapter III.B., amendments).
In T 323/05 the board stated that R. 57a EPC 1973 (now R. 80 EPC) established a limit to the amendments which could be made to the patent in suit, namely the amendments had to be occasioned by grounds of opposition specified in Art. 100 EPC 1973 (substance unchanged), even if the respective ground had not been invoked by the opponent. Art. 84 EPC (unchanged) and R. 57a EPC 1973 were the two provisions which had to guide the patent proprietor when he was invited by the opposition division to adapt the description. In other words, the amendments had to be appropriate and necessary, and nothing more.
Amendments occasioned by national prior rights - which are not included in the grounds for opposition specified in Art. 100 EPC - are also admissible during opposition proceedings. The reference to R. 138 EPC (R. 87 EPC 1973), which as a general provision of the EPC 1973 also applies to opposition proceedings, makes this absolutely clear (see prior practice in T 550/88, OJ 1992, 117).
This was also confirmed by the board in T 15/01 (OJ 2006, 153). In that case, the appellant had justified the filing of separate claims for Spain and Greece on the grounds that a number of claims as granted might be ineffective in Spain and Greece, since the reservations made by both contracting states under Art. 167(2)(a) EPC 1973 (now deleted) were still in force on the date of filing of the application. The board held that, although the EPC 1973 did not contain an explicit provision for the corresponding situation where an applicant or proprietor wished to take into account the reservation made by an EPC contracting state under Art. 167(2)(a) EPC 1973, it had been the established practice of the EPO from the very beginning to accept the filing of separate sets of claims for such contracting states. This practice had also been confirmed by the Enlarged Board of Appeal in G 7/93 (OJ 1994, 775), in which the Enlarged Board of Appeal regarded such situations as an exceptional case in which amendments might be appropriate at a very late stage of the examination procedure. The technical board further made clear that the general purpose of R. 57a EPC 1973 (now R. 80 EPC) was to allow amendments only where they were made to overcome an objection against the validity of the European patent. It followed from the reference to R. 87 EPC 1973 (now R. 138 EPC) that, within the framework of the centralised opposition procedure before the EPO, amendments were also to be allowed where the patentee intended to overcome a possible ground of invalidity which only existed in respect of a particular contracting state. Thus, R. 57a EPC 1973 was not infringed by the formulation of a separate set of claims for a contracting state in which, due to a reservation made under Art. 167(2)(a) EPC 1973, certain product claims as granted would be considered invalid or ineffective.
Since the EPC does not provide for surrender of the patent in opposition proceedings, so that - even if they issue an express statement to that effect - patent proprietors cannot surrender their patent either wholly or in part during such proceedings, they can merely request that the patent be amended. In requesting that the patent be maintained in a limited form, a patent proprietor is merely attempting to delimit it to meet objections raised by the EPO or the opponents and does not, by virtue of such limitation, irrevocably surrender subject-matter not covered by the request as limited. In principle, the patentee proprietor is free to withdraw such a request at any time during opposition proceedings or to amend it subsequently and, in particular, to resume a defence of the patent as granted, unless this would constitute an abuse of procedural law or the proprietor is prevented from doing so by the prohibition of reformatio in peius. This is established case law (see T 123/85, OJ 1989, 336; T 296/87, OJ 1990, 195; T 155/88, T 225/88, T 217/90, T 715/92, T 752/93, T 1037/96, T 445/97, T 473/99, T 880/01, T 794/02, T 934/02, T 1213/05, T 1394/05).
According to the case law in T 123/85 (OJ 1989, 336), there is nothing to stop patent proprietors who have defended only a limited version of their patent in opposition proceedings from seeking to reinstate the patent as granted in any subsequent appeal proceedings. However, this is subject to the conditions laid down in G 9/92 and G 4/93 (OJ 1994, 875; accordingly, the position taken in T 369/91, OJ 1993, 561, is obsolete).