4.4.1 Examination and opposition proceedings

In T 755/96 (OJ 2000, 174) the board observed that R. 71a EPC 1973 gave the EPO a discretionary power. The EPO's power to accept or refuse late-filed new facts or evidence was in fact governed by Art. 114(2) EPC 1973, and the discretionary power to refuse new requests for amendments was governed by Art. 123 EPC 1973 and the corresponding Implementing Regulations. As to the exercise of discretion under R. 71a EPC 1973 to admit or refuse amended claims, the board held that the discretion was to be exercised by considering all relevant factors which arose in a particular case and by balancing the applicant's interest in obtaining proper patent protection for his claimed invention and the EPO's interest in bringing the examination procedure to a speedy close by the issue of a decision (following G 7/93, OJ 1994, 775).

In T 755/96 the board also held that it was important to draw a distinction between the application stage and the opposition stage. The reasons given for introducing R. 71a EPC 1973 made it clear that a particular concern was that in opposition proceedings other parties were not taken by surprise. Parties to opposition proceedings were often represented by professional representatives, who would need to consult their clients and technical experts for further instructions to deal with new requests or evidence. Thus there could be good reasons to refuse material filed after the final date set under R. 71a EPC 1973, or to postpone oral proceedings. However, the same considerations did not apply to an examining division which had its own technical expertise and did not have to obtain instructions from third parties. If prepared for oral proceedings, it should normally, even in relation to requests filed at the oral proceedings, be in a position to assess whether a new request was clearly not allowable and to decide on the basis of this finding not to admit such a new request into the proceedings. An examining division which in exercising such discretion does not admit amended claims must give the reasons therefore.

In T 712/97 the respondent (opponent) had filed a report of comparative experiments on the last day of the period set for filing comments pursuant to R. 71a(1) EPC 1973. The opposition division allowed this experimental report into the proceedings, but not the appellant's experimental report in response thereto. The board held that admitting the respondent's experimental report into the proceedings meant that the subject of the proceedings had changed within the meaning of R. 71a(1) EPC 1973 and that the appellant's experimental report should therefore also have been admitted into the proceedings. That the appellant's report would not affect the outcome of the proceedings was in these circumstances not a valid consideration. A party was entitled to know that its response was part of the documents admitted into the proceedings, even if it proved not to be decisive for the outcome before that instance.

In T 484/99 the appellant (patentee) alleged that the refusal, under R. 71a EPC 1973, by the opposition division to consider or even look at amendments to the requests presented on the day of the oral proceedings before them amounted to a procedural violation. The board disagreed because it was clear from the wording of R. 71a(2) EPC 1973, that submissions by the proprietor presented after the final date did not need to be considered. In T 64/02 the board referred to the case law of the boards of appeal holding that the opposition division's discretion to disregard submissions filed too late also covered amended claims presented after the final date fixed under R. 71a EPC 1973. R. 71a(2) EPC 1973 thus also applied to the belated submission of amended patent claims in an auxiliary request, even if those claims had not been requested in the summons (see also T 1105/98 referred to further below).

In T 951/97 (OJ 1998, 440), the board held that the subject of the proceedings was changed within the meaning of R. 71a(1) and (2) EPC 1973, inter alia, where the examining division itself introduced a new document, which was pertinent new material, into the proceedings for the first time during oral proceedings convened following a R. 71a EPC 1973 notification.

In T 765/06 the examining division had pointed out in the summons that preparatory submissions and new claims should not be filed later than one month before the date of oral proceedings. Six days before the oral proceedings, the applicant filed new requests which the rapporteur, in a telephone conversation with the applicant, regarded as prima facie non-protectable and which were not admitted in the oral proceedings pursuant to R. 71a EPC 1973. The board found that conceding permission to file new claims did not comprise an assurance that such claims would be considered in the proceedings, with a considerable restriction of the time available for examination. To safeguard the legal form of the patent grant procedure and ensure that decisions were taken with due care, the examining division could not readily dispense, in advance and without knowledge of the matter to be considered, with the time required to prepare for oral proceedings.

In T 798/05 the board held that R. 71a EPC 1973 did not constitute an absolute bar on late submissions in opposition proceedings, which would rule out prima facie examination. R. 71a EPC 1973 did not override or restrict the principle of ex officio examination enshrined in Art. 114(1) EPC 1973, since an implementing regulation ranked lower than an EPC Article. The actual wording of R. 71a EPC 1973 using the expressions "brauchen, need not, peuvent" left room for discretion over the admission of late submissions.

In T 937/09 the board held that, if the applicant filed amendments to the application before the final date set by the examining division under R. 116(1) EPC, the examining division could still refuse such amendments under R. 137(3), second sentence, EPC (in the version applicable until 31.03.2010; see R. 137(3) EPC for the version applicable since 1.4.2010).

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