2.2.2 Amendments filed in preparation for or during oral proceedings 

Rule 116(2) imposes the same obligations on the applicant or patent proprietor when submitting new documents which meet the requirements of the EPC (i.e. new amendments to the description, claims and drawings) as Rule 116(1) imposes on the parties in submitting new facts and evidence.

The examining or opposition division has discretion to disregard amendments filed after the date set under Rule 116(1) as late-filed, unless they have to be admitted because the subject of the proceedings has changed. As a rule, amendments submitted before the date set under Rule 116(1) cannot be considered late-filed.

The following are examples of what would normally amount to a change in the subject of the proceedings:

– the opposition division admits under Art. 114(1) new facts and evidence or a new ground of opposition because they are prima facie relevant

– the examining division cites a further relevant document for the first time (H‑II, 2.7)

– the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent. 

In these examples, a request for amendment made by the applicant or proprietor in response cannot be rejected as late-filed even if submitted after the date set under Rule 116(1). If, however, after a change in the division's opinion, the applicant or proprietor files a new request that reintroduces subject-matter to which the division has already objected, the division has discretion to disregard the new request on the basis that it is prima facie not allowable.

On receipt of amendments filed after the final date set under Rule 116(1), the division therefore first analyses whether the amendments were filed in time in response to a change in the subject of the proceedings. Only if this is not the case does the division have discretion to disregard the amendments. It has to exercise this discretion according to the principles set out in E‑VI, 2.2.3. The mere fact that amendments are filed after a given date is not on its own a legal basis for not admitting them.