5.1. Admissibility of amendments

ABl. EPA 2021, Zusatzpublikation 2
OJ EPO 2021, Supplementary publication 2
JO OEB 2021, Publication supplémentaire 2

In T 802/17 the opposition division had given the patent proprietor an opportunity to draft one additional request during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy (which the opposition division had anyway merely hinted at) had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.

In T 368/16 the opposition division allowed the proprietor to file various auxiliary requests in the course of the oral proceedings. Request IIIb was admitted and found to comply with the requirements of Art. 83 and Art. 123(2) EPC. Its process claim 1 was held to be novel but not its product claim 23. The proprietor then filed a further request consisting only of process claims 1 – 22 of request IIIb. This request IVa was not admitted by the opposition division. Based on the following considerations the board held that the opposition division had exercised its power of discretion under R. 116(2) EPC in an unreasonable way and by not applying the proper principles: The request per se was apt to overcome all the objections discussed so far during oral proceedings. Even if inventive step had still to be discussed, its filing could not be considered as an attempt to prolong unnecessarily the proceedings; on the contrary, since request IVa was based on a convergent limitation with respect to request IIIb and on a combination of features derived from the granted claims, it clearly restricted the issues remaining to be discussed.

In T 688/16 the opposition division had revoked the patent after refusing under Art. 114(2) EPC to admit auxiliary requests 2 and 3 filed during the oral proceedings on the ground that they clearly lacked novelty. The appellant (patent proprietor) requested on appeal that this decision be set aside and that the patent be maintained in amended form on the basis of its main request, which corresponded to the auxiliary request 3 it had filed during the opposition proceedings. The board held that the opposition division had lacked discretion to decide whether (or not) to admit auxiliary request 3. It had cited Art. 114(2) EPC but it served as a basis only for discretion to admit or refuse facts or evidence. Discretion not to admit late-filed requests was instead conferred by R. 116(2) EPC, but it could be exercised only if the patent proprietor had been notified of the grounds prejudicing the maintenance of its patent and invited to submit new documents by the date fixed under R. 116(1) EPC, in which case sentences 3 and 4 of R. 116(1) EPC applied mutatis mutandis. That discretion was thus conditional on a communication stating that grounds prejudiced the maintenance of the patent. In the case at issue, however, the opposition division had not issued any such negative communication but only one stating its provisional opinion that none of the grounds for opposition prejudiced maintenance of the patent as granted. The board found that R. 116(2) EPC had thus not been applicable. On the contrary, since the opposition division had not changed its provisional view until the oral proceedings, it ought to have given the patent proprietor an opportunity to respond accordingly by submitting a new request. The board could see no grounds for refusing to admit the main request on appeal, which had already been filed with the statement of grounds of appeal and so, exercising its discretion, decided to admit it in accordance with Art. 12(4) RPBA 2007.