5.1.3 Time frame for filing amendments

R. 80 EPC (R. 57a EPC 1973) does not specify the point in time up to which amendment is allowed; here the practice in existence prior to the introduction of R. 57a EPC 1973 remains unchanged. This restriction of the right to amend is in line with the object and purpose of opposition proceedings, and does away with the need for a discretionary provision like R. 137(3) EPC (R. 86(3) EPC 1973) (see notes on introduction of R. 57a EPC 1973 in Notice dated 01.06.1995, OJ 1995, 409).

The boards of appeal have derived, in particular from R. 79(1) EPC (R. 57(1) EPC 1973), the principle that the proprietor has no right to have amendments admitted at any stage of opposition proceedings. At the discretion of the opposition division or the board of appeal, amendments can be refused if they are neither appropriate nor necessary. In particular, late-filed amendments can be refused if they are not a fair attempt to overcome an objection made. In general, the question whether an amendment is appropriate can only be answered on the basis of its content, i.e. after it has actually been submitted. To refuse any further amendment is only appropriate if it is evident after various unsuccessful amendments that the proprietor is not seriously trying to overcome the objections but is only delaying the proceedings (T 132/92; see also T 1758/15). In T 802/17, the opposition division had given the patent proprietor an opportunity to draft an additional request (German: "einen zusätzlichen Antrag zu formulieren") during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy (which the opposition division had anyway merely hinted at) had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.

In T 463/95 the board highlighted that according to T 153/85 the opposition division exercises a discretionary power in relation to requests for amendment. Consideration of a new or amended independent claim could reasonably be expected when such a new or amended claim results from a combination of features taken from granted claims which has been specifically opposed, since the opponents should already be familiar with the subject‑matter.

In T 648/96 the amendments requested during the oral proceedings before the opposition division were simply a response to arguments put forward. The board said EPO deciding instances have a discretion to consider documents (including claims) filed in particular during oral proceedings, if they respond to the instance's or the opponent's objections, or are clearly grantable. Undesirable delays in the proceedings should, however, be avoided.

In T 382/97 the appellant (patentee) had submitted three auxiliary requests only at the beginning of oral proceedings. It tried to justify disregarding the time limit set by the opposition division under R. 71a EPC 1973 (R. 116 EPC) by citing R. 57a EPC 1973 (R. 80 EPC) which, it asserted, "was created as a lex specialis for amendments during opposition proceedings". The board could not accept the argument that the absence of a time limit in R. 57a EPC 1973 entitled a patent proprietor to submit amendments to its patent at any time, i.e. also during oral proceedings, without good reason. In the board's judgment, R. 57a EPC 1973 and R. 71a EPC 1973 together governed the procedural preconditions for amendments to a patent by its proprietor before the opposition division, which amendments of course had to comply with Art. 123(2) and (3) EPC 1973: R. 57a EPC 1973 created the legal basis for amendment, and R. 71a EPC 1973 governed the deadline for doing so. The board emphasised that amendments not complying with a time limit set under R. 71a EPC 1973 might nevertheless be admissible if there were good reasons for their late submission. Finally, the board noted that the patent owner's right to amend its patent under R. 57a EPC 1973 did not equate to an automatic right to file additional auxiliary requests. Any amendment had to be carried out in the most expedient manner, which had to be established by the opposition division, taking into due account the interests of all parties.

In T 2415/13 the opposition division had admitted an auxiliary request filed only at the oral proceedings since, as stated in its decision, the amendment made in it was "neither unforeseeable nor difficult to grasp". In the board's view, this implied that, according to the opposition division, the opponent could be expected to deal with the amendment during the oral proceedings. This was an appropriate criterion to apply when deciding on the admissibility of late-filed requests and the board has no reason to assume that the opposition division applied it in an unreasonable way.

In T 754/16 the opposition division had not admitted auxiliary requests 8 and 9, filed during oral proceedings, on a prima facie basis (referring to Art. 114(2) and R. 116 EPC). The board noted that this presupposed, in the first place, that the requests were late (confirming T 273/04). This was however not the case since filing the auxiliary requests was a direct response to the opposition division's change of opinion in the oral proceedings. Under R. 116(2) EPC, requests filed after the final date set for making written submissions can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent, which was not the case here. Neither did Art. 114(2) EPC provide a basis for disregarding these requests since it applied only to late filed facts and arguments.

Concerning the time frame for filing amendments, see also in this chapter IV.C.6. "Right to be heard in opposition proceedings".

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