Abstract on Rule 116 EPC for the decision T1731/23 of 16.01.2026

In T 1731/23 the board expressed the view that there is no established principle that submissions filed before the date set under R. 116 EPC are generally admissible, just as there is no principle saying that a submission filed after that date is automatically inadmissible. According to the board, it is rather established case law that the opposition division has a discretion (not) to admit amendments filed after the period specified in the communication under R. 79(1) EPC. In the case in hand, a first oral proceedings took place before the opposition division on 17 May 2023 ("the first leg of the oral proceedings"), during which the proprietor filed auxiliary request 1bis. As there was not enough time left to discuss the newly filed request, it was agreed that the oral proceedings be adjourned until 15 June 2023 ("the second leg of the oral proceedings"). A new summons was issued to that effect on 24 May 2023, indicating the final date for filing new submissions as 17 March 2023 – the same date as set in the first summons to oral proceedings on 17 May 2023. On 14 June 2023, i.e. the day before the second leg of the oral proceedings, the proprietor filed a new auxiliary request 1. It differed from auxiliary request 1bis of 17 March 2023 by replacing the "grid code feature" with a feature taken from the description – "the individual WTC feature". The opposition division considered that the new auxiliary request 1 was late, as it was filed after the final date for making submissions. Moreover, it was not considered to be a reaction to the course of the proceedings, and it involved a feature taken from the description. In the grounds of appeal, the proprietor argued that the opposition division had not exercised its discretion correctly. According to the proprietor, it was established EPO case law that requests filed before the expiry of a R. 116 EPC time limit were generally admissible, and that this principle also applied for auxiliary requests with features taken from the description. Further, the proprietor argued that the opposition division had not set a valid final date for making written submissions in accordance with R. 116(1) EPC in respect of the (adjourned) second oral proceedings. The proprietor argued that, for these reasons, the board should admit auxiliary request 1 into the appeal proceedings. The board did not concur, finding that, in exercising its discretion, the opposition division had considered, apart from the date of filing one day before the oral proceedings (which must be considered late by any standards), the nature of the amendments including their complexity and whether they were a reaction to the course of the proceedings. The board remarked that a feature taken from the description was naturally more complex to deal with as it might require an additional search. It noted that, indeed, the decision described that the opponent had objected that their search had not included the "individual WTC feature". Furthermore, the board noted that the amendments did not represent a convergent development, as the "individual WTC feature" replaced the previous "grid code feature" rather than building onto it. Thus, the opposition division had considered that it was not justified to admit this amendment at such a late stage of the proceedings. The board saw nothing wrong with this. In the board's view, the opposition division had exercised their discretion in a reasonable way. Concerning the alleged failure to set a final date for making submissions under R. 116 EPC, the board pointed out that it was clear that the oral proceedings on 15 June 2023 were a continuation of the oral proceedings on 17 May 2023 and not a separate hearing to discuss new issues. The board highlighted that the adjournment of oral proceedings requires a new summons. This does not mean, however, that a new date for making submissions needs to be set (see also Guidelines E-III, 8.11.2 – March 2024 version). The board did not see any errors in the opposition division's use of discretion or any other reasons justifying the admittance of auxiliary request 1 in the appeal proceedings. Consequently, it decided not to admit it under Art. 12(6) RPBA.