New R. 71a (2) EPC (Conclusion of the grant procedure) makes it clear that, until the decision to grant the European patent is issued, the examining division may resume the examination proceedings at any time.
Once the applicant has approved the text communicated to him pursuant to R. 71(3) EPC, by paying the fees and filing the translation of the claims, further requests for amendment will only exceptionally be admitted under the discretionary power of the examining division given by R. 137(3) EPC. A clear example of an admissible request is where the applicant files separate sets of claims for designated States that made reservations under Art. 167(2) EPC 1973 or for which prior national rights exist. Similarly, it is appropriate to admit minor amendments which do not require re-opening of the substantive examination and which do not appreciably delay the issue of the decision to grant (see G 7/93, OJ 1994, 775).
A refusal of amendments must be reasoned, and both Art. 113(1) and Art. 116(1) EPC must be observed. It must be shown that the conditions defined in G 7/93 (OJ 1994, 775) are not met. This means that arguments must be given as to why the amendments are not minor in nature but in fact necessitate resuming substantive examination while considerably delaying the issue of a decision to grant the patent (Guidelines H-II, 2.6).
Decision G 7/93 (OJ 1994, 775) relates to former R. 71(5) EPC (also former R. 51(6) EPC 1973). 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 pregrant 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 would 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.
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.
The criteria for exercising its discretion under R. 137(3) EPC at this late stage are whether the request can be decided on in a reasonable period of time, and whether the amendments are allowable. If either of these criteria is not satisfied, the request for amendments should be refused by the division in the exercise of its discretion according to R. 137(3) EPC (Guidelines H-II, 2.6).
In the Enlarged Board's view, when considering the possible circumstances under which 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 the 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. 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.
In G 10/92 (OJ 1994, 633) the Enlarged Board stated that if examination proceedings were re-opened by the examining division after approval in accordance with R. 51(4) EPC 1973, because for whatever reason the proposed text for grant was to be amended, R. 51(4) EPC 1973 required that the applicant once again be informed of the text in which the examining division intended to grant the European patent. The same was true in appeal proceedings. The approval in accordance with R. 51(4) EPC 1973 given before the department of first instance was equally binding on an appeal. If the board of appeal then concluded that the patent had to be amended prior to grant, the applicant again had to approve the amended text, approval being stated before the board if the board was ruling on the issue, or to the examining division if the matter had been remitted.
In G 10/93 (OJ 1995, 172) the Enlarged Board held that the examining division was not bound by the view whether positive or negative expressed in the examination pursuant to Art. 96(2) EPC 1973; examination proceedings could be re-opened "for whatever reason" after the approval in accordance with R. 51(4) EPC 1973.
In T 171/85 (OJ 1987, 160) the board decided that if discrepancies or inconsistencies are found in the text communicated under R. 51(4) EPC 1973 to the applicant for a European patent, they may be removed in agreement between examining division and applicant even if the latter has already given his approval under R. 51(4) EPC 1973 to the (faulty) text.