4.12.8 Change of subject-matter

In T 1273/04, the board held that an amended claim belatedly filed in oral proceedings could only be admitted if it was clearly allowable by virtue of a clearly permissible amendment. However, this principle had to be tempered in examination appeal proceedings by having regard to the extent to which the application had been examined. Applying this to the case in hand, the board found that claim 1 of the main request had been amended in a clearly permissible manner. However, the amendment had shifted the subject-matter claimed in a divergent manner which would require a new study of the prior art and potentially even review of the search in order to assess novelty. The main request was therefore refused.

In T 651/03, the board found that claim 1 of the first auxiliary request had been amended in such a way that its category had been changed from a product claim to a use claim. The board concluded that this change extended the patent protection and therefore ran counter to Art. 123(3) EPC 1973. The late-filed request was therefore clearly non-allowable.

In T 267/09 the board pointed out while the whole discussion in the opposition proceedings and in the appeal proceedings up to and including the oral proceedings before the board was focused only on the independent product claims. The late filed auxiliary requests were directed to method claims. With this change in the category the appellant shifted its case in an unexpected manner in an entirely different direction and in fact created another case. Admitting these requests into the proceedings, taking the respondent and the board by surprise, would run counter to the need for procedural economy and to the principle of procedural fairness.

In ex parte case T 979/07, the board said that admitting a set of claims filed only in oral proceedings and necessitating an additional search because it shifted the claimed invention to other technical matter would de facto give applicants in appeal proceedings carte blanche to get oral proceedings postponed or the whole examination procedure reopened. That would be at odds with the requisite procedural economy (see also T 407/05, T 1123/05 and T 764/07).

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