4.4.2 Clear allowability of amended claims

In accordance with the case law, the boards refuse to consider late-filed auxiliary requests on the ground that they are inadmissible where they are directed to subject-matter which prima facie is not allowable. The subject-matter must be so clear and straightforward that it can be easily understood and regarded as allowable. Claims are clearly allowable if the board can quickly ascertain that they do not give rise to new objections and overcome all outstanding objections under the EPC and their patentability could be assessed without giving rise to any difficulty or delay (similarly T 153/85, OJ 1988, 1; T 270/90, OJ 1993, 725; T 955/91, T 92/93, T 401/95, T 862/00, T 1004/01, T 1202/02, T 922/03, T 87/05, T 1785/07, T 824/07, T 615/08, T 421/09). It must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully address the issue raised, without giving rise to new ones (T 1634/09, T 1743/09). There must be no doubt that the late­filed requests meet the formal requirement and that they constitute a promising attempt to counter all outstanding objections (T 33/07, T 321/07, T 1650/08, T 1168/08, T 1634/09).

In T 70/04, the board refused to admit an auxiliary request for maintenance of the patent in a further amended form. With respect to the admissibility of this auxiliary request, the board found that, although the amendment indicated was a combination of two claims, it was quite extensive and raised new issues which had not yet been considered in the opposition or appeal proceedings, mainly because of a greatly increased number of variables compared to claim 1 as maintained. Had it admitted the request, the board would have been obliged either to remit the case to the opposition division, so as to prevent the losing party from being deprived of an instance, or to arrange for further oral proceedings.

In order to justify the late filing of the amended claim during oral proceeding in T 708/05 the appellant stated he was faced with an unexpected situation because the board took the opposite position on novelty from the Opposition Division. The board held that the fact that a board of appeal reverses a conclusion reached in a decision at first instance is a matter which a party must always be prepared for. In the present circumstances the introduction of a disclaimer to establish novelty at this late stage, a proposal which had previously been on the table but which had been abandoned in the meantime by the appellant, is not conduct which warrants the exercise of the board's discretion in the appellant's favour. Furthermore, the subject matter of this new request would still give rise to several objections and would therefore not amount to clearly allowable subject-matter.

In T 1004/01, the amendments to the claims related solely to a narrower definition of features and values which were so clear and straightforward that a person skilled in the art could easily understand them. It was not unusual, the board found, for several auxiliary requests to be submitted in appeal proceedings, since they were the patentee's last opportunity to have the patent maintained. The patentee's conduct therefore could not be regarded as abusive.

In T 1650/08 the board did not limit the preliminary assessment of the allowability of the late filed requests to issues under Art. 123 EPC but also considered issues of novelty and inventive step on which the opposition was based but which were not dealt within those proceedings. The appellant argued that the board could only take into account issues which had been dealt with in the decision under appeal. The board did not consider it as a necessary prerequisite that the proposed amendments overcome all outstanding objections with certainty but that they result at least in an arguable case. The board saw no reason in admitting amendments which would result in clearly non-allowable request as this would only lead to unnecessary delays.

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