5.4.2 No legal basis for exercise of discretion

In T 2431/19 the board held that R. 137(5) EPC provided for a mandatory requirement that amended claims must fulfil to be allowable. R. 137(5) EPC did not refer to the act of making an amendment, but rather to the amended claims themselves. More specifically, the phrase "amended claims may not" or "nor may they" in R. 137(5) EPC expressed - in the form of a prohibition - a substantive and mandatory requirement for amended claims to be allowable. This requirement did not leave any room for discretion on the part of the deciding body. Accordingly, and contrary to R. 137(3) EPC, there is no reference to consent by the examining division in R. 137(5) EPC. The board found that R. 137(5) EPC hence relates to a matter of substantive law rather than to a matter of procedural law. It lays down substantive requirements, non-compliance with which leads to the refusal of a European patent application under Art. 97(2) EPC (see also T 1126/11). R. 137(5) EPC does not, however, provide a separate legal basis for taking a discretionary decision on the admittance of amended claims which could be relied upon independently from R. 137(3) EPC. In the case in hand the non-admittance of an amended set of claims on the basis of that Rule alone therefore constituted a substantial procedural violation under R. 103(1)(a) EPC.

In T 1866/15 the board endorsed the findings of T 2431/19, finding that if an amendment did not comply with R. 137(5) EPC, it was not allowable on that ground alone and the examining division no longer had discretion whether or not to admit it under R. 137(3) EPC.