Amendments filed in preparation for or during oral proceedings

Rule 116(2) imposes the same obligations on the applicant or patent proprietor when submitting new documents which meet the requirements of the EPC (i.e. new amendments to the description, claims and drawings) as Rule 116(1) imposes on the parties in submitting new facts and evidence. Here the division also has the discretion to disregard amendments because they are filed too late before the oral proceedings unless they have to be admitted because the subject of the proceedings has changed.

For example, if new facts and evidence or a new ground of opposition are admitted under Art. 114(1) because they are prima facie relevant, a request of the proprietor for corresponding amendment would have to be admitted even if submitted after the above final date because the subject of the proceedings has changed. The same applies if the examining division cites a further relevant document for the first time (H‑II, 2.7).

Equally, amendments that are submitted by the applicant or proprietor in due course in response to objections raised by the division which depart from a previously notified opinion may not be rejected as late-filed.

For instance, if the opposition division departs from its provisional opinion set out in the annex to the summons and – contrary to that opinion – concludes during oral proceedings that an objection prejudices the maintenance of the patent, a request of the proprietor for (further) amendment will normally be admitted into the proceedings.

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