2.6.3 The burden of proposing amendments

In T 300/89 (OJ 1991, 480) the board pointed out that, even if it were possible for the examiner to envisage amendments which might lead to the grant of a patent, the burden lay with the applicant to propose amendments if he so wished (including various alternatives in the form of auxiliary requests). These amendments could be proposed in the applicant's observations in reply to the first communication (Art. 96(2) EPC 1973) from the examining division, where any objections were raised (T 599/92). It also held that an applicant had a right to request oral proceedings at any time, but if he wished to avoid the risk of an adverse decision being issued without oral proceedings being appointed, he should request oral proceedings at the latest in his observations in reply to such (here, first) communication under Art. 96(2) EPC 1973.

In T 301/10 the board stated that it is incumbent upon the appellant to maintain unamended or to amend – optionally on an auxiliary basis – the application documents upon which examination is to be carried out and a decision eventually to be reached (Art. 94 and 97 EPC together with Art. 113(2) EPC 1973) (see T 300/89), and not upon the examining division to prolong the examination procedure beyond the procedural framework set out in the EPC (see in this respect Art. 123(1) EPC together with R. 86(3) EPC 1973) until the applicant opts for amending the application and eventually "exhausts" all possibilities for amendment, as this would seriously undermine the principle of procedural economy.

Quick Navigation