5.2.1 General

According to T 472/88, in all cases in which amendments are requested by a patentee which were compatible with Art. 123 EPC, Art. 102(3) EPC 1973 (now Art. 101(3)(a) and R. 82 EPC) conferred on the opposition division and the board of appeal jurisdiction, and thus the power, to decide on the amended patent in the light of the requirements of the EPC as a whole. This jurisdiction was thus wider than that conferred by Art. 102(1) and (2) EPC 1973 (both now Art. 101(2) EPC) which expressly limited jurisdiction to the grounds of opposition mentioned in Art. 100 EPC. When amendments were made to a patent, both instances have the power to deal with grounds and issues arising from those amendments even if they were not (and could not be) specifically raised by an opponent pursuant to R. 55(c) EPC 1973 (now R. 76(2)(c) EPC) (T 227/88, OJ 1990, 292; G 9/91, OJ 1993, 408; T 472/88; T 922/94; see also T 459/09; for examination of compliance with Art. 84 EPC, see in this chapter IV.C.5.2.2 below).

In T 503/96 the board considered the criteria for the need for an additional search in relation to restrictive amendments. It referred to the Guidelines B‑III, 3.5, then applicable, which state, "In principle, and in so far as possible and reasonable, the search should cover the entire subject‑matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended...". The board stated that whether or not to commission an additional search in a particular case was a matter for the administrative discretion of the opposition division, but if an inappropriate criterion was invoked when exercising this discretion, doubt would inevitably be raised as to whether the discretion was reasonably exercised. Since, in the case of amendment of the claims in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (G 9/91, OJ 1993, 408), it was not inappropriate for an opponent to make observations on a possible need for an additional search to enable this full examination to be carried out (Guidelines D‑VI, 5, then applicable). The judgment on whether an additional search was necessary and the obligation to perform this search if it was judged to be necessary were administrative matters for the EPO.

In T 648/96 the board found that the opposition division's failure, in the contested decision, to address the substance of the opponent's "lack of clarity" objections to the amended documents was a substantial procedural violation; under Art. 102(3) EPC 1973 (now Art. 101(3)(a) and R. 82 EPC), it should have examined of its own motion whether the amendments complied with Art. 84 EPC and Art. 123(2) and (3) EPC 1973 (see also T 740/94).

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