4.2.2 Amendments after arrangement of the oral proceedings

Under Art. 13(3) RPBA, amendments made after oral proceedings have been arranged cannot be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to address without an adjournment of the oral proceedings. This provision therefore leaves the decision­making board no room for discretion (T 253/10).

Even at such a late stage of the proceedings, the boards would in some cases still admit amendments which made the request prima facie allowable, for reasons of procedural economy. Such amendments should in principle allow the granting of a patent based thereon (T 1748/08, T 2250/08).

The general interest in efficient conduct of the appeal procedure is an important factor to be considered where it is sought to introduce evidence or requests into the proceedings after arrangement of the oral hearing. Depending on the circumstances, new submissions or requests may be disregarded if an adjournment is required before the proceedings can be closed (T 764/03).

In T 81/03, the board found that requests filed shortly before the minimum deadline set by it in the summons to the oral proceedings had to be regarded as belated where they contained points which could only be dealt with properly in an additional written phase (T 518/08).

In T 253/06, the board held that it was permissible under Art. 13(3) RPBA to regard as belated auxiliary requests filed after oral proceedings had been arranged but within the prescribed period, if those requests were not substantiated, i.e. not accompanied by reasons explaining why the amendments had been made and how they were intended to overcome the objections raised in the course of the proceedings. In such cases, neither the board nor the other parties to the proceedings could reasonably be expected to consider these points, especially if there were a large number of requests and the features of the claims raised new aspects (T 2422/09, T 351/10). This conclusion holds all the more true, if such an unsubstantiated request is filed only shortly before the oral proceedings. In this respect an ex-parte is not different from an inter-partes case (T 1278/10).

Amended claims filed at such a late stage should be clearly allowable in the sense that it can be quickly ascertained that they overcome all outstanding issues without raising new ones (T 1126/97,T 1993/07, T 183/09).

In T 133/04, auxiliary requests were filed after the oral proceedings had been arranged and during those proceedings. The board held that, since no new objections had been raised during the appeal proceedings, there was no manifest need to submit new requests after filing the statement of grounds of appeal. Nor had the appellant provided satisfactory evidence that the late-filed requests were apt to take better account of the reasons for the decision than those filed with the statement of grounds of appeal (see also T 50/98).

Similarly, in T 1443/05, the board refused to admit the auxiliary request under Art. 13(3) RPBA because, as a result of its late filing, the question whether it met the requirements of Art. 123(3) EPC 1973 could not be answered without adjourning the oral proceedings (see also T 1026/03, T 1305/05, T 455/06).

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