The amendment of claims during an appeal from a decision to refuse a European patent application is a matter of discretion under R. 137(3), last sentence, EPC (unchanged from the previous R. 86(3), last sentence, EPC 1973).
According to T 63/86 (OJ 1988, 224), where substantial amendments to the claims are proposed on appeal, which require substantial further examination, the case should be remitted to the examining division. In this way, the applicant's right to appeal to a department of second instance is maintained, both in relation to the exercise of discretion under (the then) R. 86(3) EPC 1973, and in relation to the formal and substantive allowability of the amended claims. Several boards of appeal have applied this case law in their decisions; e.g. T 200/86, T 296/86, T 341/86, T 98/88, T 423/88, T 501/88, T 47/90 (OJ 1991, 486), T 184/91, T 919/91, T 599/92, T 1032/92, T 1067/92, T 96/93, T 186/93 and T 462/94.
In T 746/91 the board applied the principles laid down in T 63/86 and remitted the case to the opposition division for it to examine and decide whether discretion should be exercised in favour of the appellant, and if so, whether the claims complied with the provisions of the EPC. The board took this view in the particular circumstances because the opposition proceedings had themselves been comparatively brief and had not involved the holding of oral proceedings. It had thus adhered to the principle whereby it should be established swiftly whether or not a patent can be maintained. Moreover, the amended claims had been filed with the statement of grounds, i.e. at the earliest possible stage in the appeal proceedings.
In T 125/94 the board remitted the case to the department of first instance because the amended claims had not only substantially changed the factual framework of the contested decision, but could also require a search in an additional classification unit to determine the closest prior art.
According to the board in T 1201/00, if a case is likely to have to be remitted to the opposition division for it to assess the unexamined issue of inventive step, a new auxiliary request first submitted during oral proceedings before the board designed to overcome an objection of lack of novelty compared with a cited document may exceptionally be admitted and also remitted to the opposition division for final novelty examination against that document if none of the requests that took precedence can be granted for lack of novelty. The need for the department of first instance to assess inventive step against all the cited prior art means that novelty examination against one cited document would not entail a significant delay in the opposition proceedings.
However, the amendment of the claims in response to the citation of a new document during appeal proceedings is not as such a sufficient reason to remit the case to the department of first instance (T 111/98). Following this decision, the board in T 98/00 did not remit the case despite the appellant's request to do so, finding that it would make no sense if the boards were ipso facto obliged to remit the case whenever new matter was raised in appeal proceedings, irrespective of the nature of such matter. In T 893/07 the board interpreted T 111/98 to mean that what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings. As it had not, remittal was refused. The board in T 1493/06 stated that in decision T 111/98, implicitly referring to the right to be heard pursuant to Art. 113(1) EPC 1973, it was considered that remittal due to the admission of a new document should rather be an exception, for example if, without remittal, a party would not have had sufficient opportunity to defend itself against an attack based on the new document. In the case before it, the board introduced document D7 at an early stage in the appeal procedure in a first communication, and subsequently issued another fully reasoned objection based on document D7 in the communication accompanying the summons to oral proceedings. The appellant had thus had sufficient opportunity to react to the introduction of document D7, so that remittal was not necessary in order to comply with Art. 113(1) EPC 1973.
In T 908/07, the board held that a late-filed claim admitted in the exercise of the board's discretion mainly because the board and the opponent could be clearly expected to deal with the issues raised without adjournment of the oral proceedings, should not normally be remitted to the department of first-instance for examination in respect of the grounds for opposition on which the first instance decision was based.
In T 1300/06 the board recalled that, in accordance with G 9/91 (OJ 1993, 408), in cases where Art. 100(c) EPC 1973 was not an original ground of opposition and the opposition division did not consider it necessary to use its discretion to introduce it into the opposition proceedings, the consideration of this Article for the granted claims at appeal stage was possible only with the patentee's consent. This, however, did not prevent the board from examining anew the formal requirements of the EPC in respect of any other request containing amendments and filed in order to overcome original grounds of opposition. The fact that objections raised under these articles - and the arguments submitted therefore - might also have been relevant to the granted claims could not prevent the board from considering them in the context of the new amended request, since each request had to be considered on its own. The case was therefore remitted.