A decision to maintain the patent in amended form may be delivered only when the patent proprietor has approved the new text on the basis of which the opposition division intends to maintain the patent and the opponent has had sufficient opportunity to comment on the proposed new text.
Both prerequisites can be fulfilled during oral proceedings at which the opposition division establishes a complete text including the amended description and, if necessary, the amended figures. In written proceedings, the necessary opportunity to comment on the new text on the basis of which the opposition division intends to maintain the patent can also be given to the opponent when a communication is issued to the parties. Once these requirements have been met, a separate communication under Rule 82(1) is neither necessary nor appropriate (see G 1/88).
If the patent can be maintained in the amended form, the opposition division should immediately try to obtain the patent proprietor's approval of the text in which the patent can be maintained and give the opponent an opportunity to comment on it. An interlocutory decision can then be delivered straight away.
If these requirements have still not been met and no oral proceedings are being held, a communication under Art. 101(1) must be issued. This also applies when it has been established in principle that the patent can be maintained in a particular form but a complete text expressly approved by the patent proprietor is not yet available.
The patent proprietor's approval of an amended version of the patent need not be given in a separate, express declaration; it may also be apparent from the circumstances, in particular from the fact that he has filed or requested the amended version. This applies equally to versions which have been filed as an auxiliary request. (For the wording of documents in oral proceedings, see E‑III, 8.11 and E‑III, 8.11.1.).
The patent proprietor's approval can also be obtained through a communication under Rule 82(1) in which the opposition division informs the parties that it "intends to maintain the patent as amended" and invites them to "state their observations within a period of two months if they disapprove of the text in which it is intended to maintain the patent". If the patent proprietor fails to file objections to the text thus notified, he is considered to approve of it.
Generally speaking, this communication is useful only if the opposition division considers that the complete document expressly approved by the patent proprietor, on which the opponent has been able to comment, still requires amendments. However, these must not go beyond such editorial changes to the wording as appear absolutely necessary by comparison with the text most recently submitted or approved by the patent proprietor. The opposition division should draw attention to such amendments and state why they are required if they are not self-explanatory.
If within the period specified in the communication, or in a communication under Rule 82(1), the patent proprietor objects to the text in which the patent is to be maintained, the proceedings are continued. The European patent can be revoked in the subsequent proceedings if the patent proprietor objects to the text and fails to submit new, properly amended documents despite having been requested to do so.
If an opponent objects to the text communicated to him in which it is intended to maintain the patent, the opposition division will continue examining the opposition if it considers that the EPC prejudices the maintenance of the patent in the text initially envisaged.