2.5.4 Reasons for the exercise of discretion

In T 182/88 (OJ 1990, 287) and T 166/86 (OJ 1987, 372), the board decided that a separate set of claims submitted at a late stage in the proceedings was admissible under the particular circumstances. It added that the EPO's user-friendly reputation should clearly be excluded from consideration during the exercise of any discretion by the EPO. The showing of consideration towards parties before the EPO should not be confused with the proper exercise of discretion according to the law. It was also held that when a decision hinged on the exercise of discretion, the reasons should be given.

In T 309/09, the board doubted that the number of auxiliary requests could generally be considered a factor on the basis of which their admission under R. 137(3) EPC could properly be denied outright. Whilst it did not wish to rule out that a large number of auxiliary requests might be a sufficient reason in specific cases, it decided that the question could be left unanswered in the case before it, as in any event six auxiliary requests could not automatically be considered excessive. Nor did it have to consider whether a lack of convergence among the requests was relevant in this connection, because the contested decision did not contain any explicit analysis of specific cases which might support such a conclusion, even though any convergence criterion applied would at any rate have had to be assessed separately for each individual request. The board concluded that the examining division had been entitled to exercise discretion and had done so in accordance criteria which were essentially correct in the light of G 7/93, but that, contrary to R. 111(2) EPC, it had failed to give adequate reasons in support of its exercise of discretion in the contested decision. Discretionary decisions could not be taken arbitrarily and - like all decisions open to appeal - had to be substantiated. Even deficient reasoning was a fundamental procedural error on the basis of which the matter could be remitted back to the department of first instance under Art. 11 RPBA.

In T 246/08 the board stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under R. 137(3) EPC is a discretionary power that has to be exercised after considering all the relevant factors of the specific case and balance in particular the applicant's interest in obtaining an adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary. It followed that a refusal of consent to amend made in advance of any amendment being submitted could not be a reasonable exercise of discretion pursuant to R. 137(3) EPC. Indeed in the judgement of the board it was ipso facto a substantial procedural violation since it risked deterring an applicant from making an amendment which could not reasonably have been forbidden. (see also T 872/90).

In T 1105/96 (OJ 1998, 249) the board noted that the admissibility of any main or auxiliary request which was filed after the reply to the first communication from the examining division was a matter within the discretion of the examining division (R. 86(3) EPC 1973). Such discretion must be exercised lawfully having regard to the relevant circumstances. In a case such as this, where an examining division had indicated that a further request in the form of an amended text for the main claim of an application would be allowable, it was difficult to imagine any circumstances in which it would be lawful for the examining division to deny the admissibility of such request, in the exercise of such discretion. Certainly, in the circumstances of the case at issue, the rejection in advance of such a further auxiliary request unless all preceding requests were abandoned was an abuse of procedure, an unlawful exercise of discretion under R. 86(3) EPC 1973 and thus a substantial procedural violation within the meaning of R. 67 EPC 1973.

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