See also chapter V.A.4.12.13 "Reinstating broader claims in appeal proceedings".
According to T 123/85 (OJ 1989, 336), the EPC makes no provision for patentees to surrender their patents during opposition proceedings (referring to T 73/84, OJ 1985, 241; T 186/84, OJ 1986, 79) nor surrender part of the patent so as to limit it. Thus a request withdrawn during opposition proceedings may nonetheless be considered in any ensuing opposition appeal proceedings. This view was followed in many decisions, including T 296/87 (OJ 1990, 195), T 934/02, T 699/00, T 794/02, T 1276/05 and T 1188/09.
In T 1018/02, it was stated that amendments of a European patent had to comply with R. 57a EPC 1973. According to this rule, amendments were possible provided that they were occasioned by grounds for opposition. However, this did not mean that, if a patent proprietor in the first instance chose to defend a main request which was limited in scope compared with the claims as granted, then he could not during the appeal proceedings go beyond the limits of that request. In accordance with T 407/02, a patent proprietor who had only defended his patent in limited form before an opposition division, was in principle allowed on appeal to return to a broader version or even to the patent as granted. Following T 407/02, the board in T 1188/09 pointed out that opponents must therefore always be prepared for the possibility that a patent proprietor whose patent has been revoked by the opposition division will seek its restoration as granted on appeal. According to the board in T 1188/09, T 1018/02 expressly followed this approach, which was again upheld in T 386/04, where it was explained that supposedly contrary decisions had always been concerned with circumstances in which the amendment to the claim amounted to an abuse of the procedure.
According to T 386/04, an appellant (proprietor), whose patent has been revoked, is entitled to seek maintenance of the patent as granted even though its main request before the opposition division had only been the maintenance of the patent in more limited form. The exception to this is where to allow the proprietor to revert to the amended claims would amount to an abuse of procedure. According to the board, this long-standing principle is not contradicted by decisions T 528/93 or T 840/93 (OJ 1996, 335), which are concerned with new claims raising new issues, and is not contrary to the statement by the Enlarged Board of Appeal in decision G 9/91 (OJ 1993, 408), concerning the purpose of an appeal. In this context, there is no procedural logic in distinguishing between cases in which the patent has been revoked and cases in which the patent has been maintained.
The board in T 28/10 extensively discussed T 123/85 (OJ 1989, 336) and the case law based on it (including T 386/04). The board in that case had observed that the EPC 1973 made no provision for patent proprietors to surrender their patents during opposition proceedings. Given that patents could not be surrendered with effect for the EPO in opposition proceedings, it had rejected the opponent's argument that limited sets of claims filed in the course of the opposition proceedings were to be understood as a surrender. In the circumstances of T 123/85, this finding had to be considered to mean only that a European patent, as a subjective right, could not be altered with legal effect – i.e. irrevocably limited – during opposition proceedings by way of a unilateral waiver by the proprietor (see, in this connection, G 1/90, OJ 1991, 275; T 386/01) and that, therefore, claims amended for the purpose of opposition proceedings could not be deemed a surrender. Nevertheless, it could not be inferred from these conclusions that a patent proprietor must be able to revert to a broader version of the claims which it had not initially defended in the opposition proceedings, and thereby amend its case, without being subject to any procedural restrictions.
In T 28/10 the patentee had sought to introduce into the appeal proceedings claims which had not been the basis of discussion before the opposition division. The board found that the legal situation had changed since T 123/85 and Art. 12(4) RPBA 2007 was now the relevant legal provision rather than case law based on that decision. It observed that the decision in T 123/85 had been based on T 64/85, in which the board had considered that abusive exercise of the right to make subsequent amendments to submissions could be sanctioned on the basis of Art. 114(2) or R. 86(3) EPC 1973 and so taken the view that the principle of concentration, which underlay those provisions, had restrictive effect. The board in T 28/10 endorsed this finding that, in addition to the prohibitions on procedural abuse and reformatio in peius (see e.g. T 934/02), the principle of concentration likewise limited the principle of free party disposition. As far as amendments to claims in opposition or opposition appeal proceedings were concerned, the principle of concentration rule was enshrined in R. 116(2) EPC and in Art. 12(4) RPBA and Art. 13 RPBA 2007. Whilst those provisions did not preclude such subsequent amendments entirely by imposing strict time limits on certain submissions, they left it to the decision making department's discretion whether or not to allow them.