T 0263/05 (Laser welding/HONDA GIKEN KOGYO K.K.) vom 28.06.2007

I. Rule 57a EPC does not prohibit an amendment to a granted patent containing a single independent claim whereby a plurality of independent claims are introduced if the amendment is a necessary and appropriate response to a ground of opposition. (Reasons 4.8)

II.1 Rule 29(2) EPC does not apply in opposition proceedings to prohibit an amendment to a granted patent if it would be unreasonable to demand of the amended claims that they comply with this rule. This condition is satisfied in a case where otherwise Rule 29(2) EPC would force the proprietor to abandon potentially valid subject matter already contained in the granted claims. (Reasons 5.16)

II.2 No circumstances are envisaged in which Rule 29(2) EPC would be of any application in opposition proceedings. Once an amendment to the claims has been established to be necessary and appropriate having regard to grounds of opposition, it would be unreasonable to impose the additional requirement that the amendment complies with the purely administrative provisions of Rule 29(2) EPC. (Reasons 5.19)

III.1 Article 10a(2) of the Rules of Procedure of the Boards of Appeal requires that a party wishing to argue that a decision under appeal should be upheld for a reason additional to the reason(s) already relied on by the opposition division, must, in its reply to the appeal, set out its complete case in respect of this additional reason, together with all facts, arguments and evidence relied upon. Otherwise such additional reason will only be admitted and considered at the Board's discretion by way of an amendment to the party's case. (Reasons 7.10)

III.2 A Board of Appeal has an ex officio duty under Article 114(1) EPC to examine amended claims, but only for prima facie non-compliance with the EPC. (Reasons 7.15)

III.3 A Board of Appeal's power under Article 111(1) EPC, ex officio, to remit the case to the opposition division for further prosecution should only be exercised in a case such as the present one if, as a minimum, there are materials before it in the appeal proceedings which indicate that one or more of the claims under attack in the appeal proceedings is prima facie highly unlikely to be valid. (Reasons 7.16)

IV. The minutes of oral proceedings before the Boards of Appeal should record the requests of the parties on which a decision of the Board is required, such as the allowability or otherwise of the appeal, the form in which the proprietor seeks maintenance of the patent, requests for remittal of the case or relating to appeal fees or costs. The minutes should also record specific statements which have an impact on the definition of the subject-matter, such as statements of surrender or abandonment of subject-matter, where these are relevant to the decision to be taken. The arguments of the parties should not be recorded in the minutes, nor should statements or admissions made in oral proceedings which a party considers will be of use to it in any subsequent proceedings in national courts but which have no bearing on the decision which the Board is required to make, such statements or admissions neither constituting "essentials of the proceedings" nor "relevant statements" within the meaning of Rule 76(1) EPC. (Reasons 8.5 - 8.8)