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The board of appeals have developed several criteria in exercising its discretionary power to admit amended claims submitted for the first time during oral proceedings without any legally relevant excuse for the lateness. Claims which are clearly not allowable will not normally be admitted.
Moreover, R. 116 EPC (R. 71a(2) EPC 1973, not amended) and Art. 13(3) RPBA 2007 have considerably restricted the scope for admitting in opposition appeal proceedings new requests first filed by the patentee in oral proceedings despite specification of a deadline for filing such requests in the summons notice. Such auxiliary requests could be refused as belated under R. 71a EPC 1973, unless they had to be admitted on the grounds that the subject of the proceedings has changed (T 1105/98, T 494/04).
In T 1105/98 the auxiliary request was not submitted until the start of oral proceedings before the board. The board took the view that such a request could be refused as late-filed under R. 71a(2) EPC 1973 (now R. 116 EPC), unless it was to be admitted because the subject of the proceedings had changed. Discretion under R. 71a(2) EPC 1973 could be exercised only if no such change had occurred. In doing so, the board had to make sure that the amended claims fulfilled the formal requirements and appeared likely to succeed, bearing in mind the time needed to ascertain this but also the right to be heard. These conditions were not fulfilled if a further search was needed, so that either the oral proceedings had to be postponed or the matter remitted to the department of first instance for further prosecution. The board in T 681/02 adopted the view taken in T 1105/98, where the board had held that, if the said request was intended as a response to the board's preliminary opinion in preparation for the oral proceedings, it could have been submitted prior to the time limit specified in that opinion, that is to say, up to one month before the oral proceedings. Claim 1 according to the auxiliary request differed from Claim 1 as granted by virtue of an additionally incorporated feature. The general assumption therefore had to be made that this feature had not yet been searched.
In T 831/92, the board held that it was contrary to the principle of procedural fairness to file an auxiliary request in opposition proceedings during oral proceedings before a board of appeal because it was difficult for an opponent to deal with a request not submitted in good time before the oral proceedings (T 1333/05). In T 667/04 the board stated that admitting the request could have led to a postponement of the oral proceedings and thus unacceptably delayed the conclusion of the appeal procedure. Since no exceptional circumstances were put forward excusing the late filing of this request, to have admitted it would have run counter to the principle of procedural fairness (see also T 233/05).
In T 406/86 (OJ 1989, 302), the patentee proposed amendments at a stage of the appeal proceedings at which the examination of the appeal under Art. 110 EPC 1973 had practically been completed and a decision had already been drafted. The board held that admitting the amendments would slow down the proceedings and possibly affect the rights of third parties. It conceded that a different conclusion might have to be reached in exceptional circumstances, e.g. if the amended text had been obviously allowable (see also T 304/92).
In T 206/93 the appellant requested a further opportunity to file new claims, if the late-filed and not clearly allowable ones on file were not accepted after discussion. The board took the view that this was an auxiliary request which did not, however, specify the claims to be discussed. To have admitted it would have posed undue difficulties for the respondents in dealing properly with the new claims, and a possible adjournment would have led to an unacceptable delay in the proceedings. In T 231/95, auxiliary request 2 was not filed until the end of the oral proceedings on the ground that the need for a further restriction of the claimed subject-matter had only become apparent during the oral proceedings. However, the board found that the discussion in the oral proceedings had essentially been limited to the objections already raised in the preceding written proceedings and that no surprising new aspects had been raised which could have left the respondent facing new circumstances (see also T 710/99, T 107/05). Similarly, in T 1194/02, the debate in the oral proceedings had essentially been limited to the objections already raised during the written procedure and no unexpected matters creating new circumstances had arisen. Accordingly, the requests which had not been filed until the end of the oral proceedings were refused as belated.
During the oral proceedings in T 14/02, the respondent (patentee) requested the board's leave to file additional requests in order to limit the claimed subject-mater. The board refused the request on two grounds: firstly, the need for a new request had already been apparent before the oral proceedings since the board had already issued a communication containing a negative provisional opinion setting out why the main request did not appear to be inventive; secondly, the proposed subject-matter of the new requests would have required the other party to perform another search and might have resulted in a remittal.
In the ex parte case T 1273/04 the board stated that claims which are clearly not allowable will not normally be admitted. However, if the claims pass this first low and straightforward threshold, they should be admitted if:
(i) the amendments are clearly permissible under provisions of the EPC explicitly or implicitly governing amendment of the application,
(ii) the newly defined subject-matter represents a convergent development of the subject-matter which has been the subject of the examination and appeal procedure to date and
(iii) the subject-matter of the amended claims is clearly new.
Thus, the general principle is that in order to be admissible, an amended claim belatedly filed in oral proceedings must be clearly allowable by virtue of a clearly permissible amendment (T 1311/05).
In T 1067/03 (inter partes), the board admitted an auxiliary request first filed during the oral proceedings. It regarded the clarifications in the auxiliary request as a response to the preceding discussion in the oral proceedings. Moreover, the amendment was not so complex that it would have made it impossible to reach a definitive decision in the oral proceedings.