5.12.4 Response to objections

In their earlier decisions, the boards generally admitted amendments filed in response to comments and objections made by the rapporteur or the other party, although undesirable procedural delays were to be avoided (see T 38/89, T 459/91, T 1059/92, T 648/96). According to the case law on the RPBA 2003 and the RPBA 2007, amended claims could be admitted into the proceedings if the introduced amendments were properly justified, e.g. had been filed as a response to objections, evidence or comments not dealt with in the contested decision but submitted in writing during the appeal proceedings (T 397/01, T 253/10). They also had to constitute a promising attempt to counter any objection thus raised (T 1859/06).

In the cases below, the amended requests were admitted:

In T 93/11 the amendments were the direct result of the board's communication. Furthermore, they also overcame the formal objections of the board, which was procedurally expedient. Finally, they simply narrowed down the subject-matter claimed to the core of the invention. The board further considered that there was no general prohibition on reacting to a board's communication by submitting new requests, let alone when these took account of all the objections raised or repeated therein.

In T 794/94, the board recognised that patents in the field of genetic engineering sometimes gave rise to exceptional problems which made it difficult to formulate a suitable request and therefore amounted to exceptional circumstances justifying late submission of requests designed to meet objections which had already been considered at length (see also T 607/05, T 516/06).

In T 1148/97, the board took the view that late-filed claims could still be admitted if the amendments limited the scope of the subject-matter claimed to such an extent that revocation of the patent could be avoided and maintenance of the patent as amended ordered after swiftly conducted proceedings (T 710/99, T 30/03).

In T 385/06 the patent proprietor filed amendments before the final date set in the board's communication. In the judgment of the board, these amendments might be seen as a response to the board's observations relating to two grounds for opposition.

In T 610/94 too, the board admitted sets of claims filed during the oral proceedings because they had been limited and took account of the deficiencies it had identified.

In T 626/90, there was no question of the appellants having been unfairly taken by surprise, because the amendments in both requests were nothing more than a limitation of the claimed subject-matter to preferred embodiments of the invention as described in the patent in suit (T 1097/99).

In T 407/14, the additional feature in claim 1 of the main request amounted to a clear limitation of the claimed subject-matter. The board held it to be a legitimate response on the part of the appellant to the preliminary opinion of a lack of inventive step.

In T 442/12 the late-filed request was admitted because it was prima facie a promising attempt to overcome all the objections set out in the board's communication and detailed supporting reasons had been given.

In T 2475/16 the deletion of all method claims in auxiliary request 1, filed by the appellant (proprietor) during the oral proceedings before the board, had rendered all objections raised against these claims moot. Only those objections that the other parties had validly raised against the granted apparatus claims remained. The board observed that, because these objections were the same issues as previously raised, they did not give rise to any new ones. The board decided to admit auxiliary request 1 into the proceedings (Art. 13(1) and (3) RPBA 2007).