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Guidelines for Examination

 
 
2.2
Examples concerning oral proceedings in opposition procedure 

If oral proceedings are arranged, the Opposition Division issues a summons together with an annex drawing attention to the points to be discussed (Rule 116(1)) and normally containing the Division's provisional and non-binding opinion (see D-VI, 3.2). The following situations may arise:

(a)
The Division should admit new facts and evidence only if they are prima facie relevant. Furthermore, if new facts and evidence are admitted under Art. 114(1) because they are prima facie relevant, a request of the proprietor for corresponding amendment would have to be admitted even if submitted after the above final date, because the subject of the proceedings has changed.

It should however be noted that if in the provisional and non-binding opinion the Division reaches the conclusion that maintenance of the patent is not prejudiced by the facts and evidence submitted so far by the opponent, this fact per se does not give the opponent the right to have new facts and evidence admitted into the proceedings, even if submitted before the final date fixed under Rule 116(1).

If during the oral proceedings the Opposition Division, contrary to its provisional opinion set out in the annex to the summons, reaches the conclusion that the patent should be revoked, a request of the proprietor for (further) amendment should be admitted into the proceedings (see E-II, 8.6).

(b)
If the Opposition Division states in the annex to the summons that the patent is likely to be revoked, requests for amendment should be admitted if they are filed before the final date fixed under Rule 116. If such requests relate to subject-matter not covered by the claims as granted, the subject of the proceedings has changed. Consequently new facts and evidence submitted by the opponent in response to these requests should be admitted into the proceedings, even if they arrive after the final date set under Rule 116.

However, if the proprietor's requests relate to amendments based only on claims as granted and are reasonable in number, new facts and evidence submitted by the opponent should be treated as late-filed even if submitted before the final date, i.e. they should be admitted only if they are prima facie relevant. Relevant facts and evidence submitted at a late stage of the proceedings, possibly not until the oral proceedings for example, could give rise to a decision on apportionment of costs, see D-IX, 1.2, if so requested by the proprietor.

(c)
If the Opposition Division states in the annex to the summons that the patent is likely to be revoked, and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the Division could, in principle, treat such requests as late-filed and apply the criterion of "clear allowability" (see H-II, 2.7.1) in judging whether they should be admitted into the proceedings. However, the Division should consider admitting such requests into the proceedings if they relate to the subject-matter of dependent claims as granted.

It may only become apparent in the oral proceedings that the pending request submitted to overcome grounds for opposition is not allowable under the EPC. The opponent should always expect to have to discuss subject-matter based on dependent claims as granted if they are reasonable in number.

However, if late-filed requests are based on subject-matter not previously covered by the claims, they will normally not be admitted into the proceedings also for reasons of procedural efficiency. Admission of such requests could give rise to a postponement of oral proceedings, and to a decision on apportionment of costs.