1. By decision of 14 October 2015[ 1 ] the Administrative Council of the European Patent Organisation amended Rule 82(2) EPC such that in oral proceedings an interlocutory decision of an opposition division under Articles 101(3)(a) and 106(2) EPC or a decision of a board of appeal under Article 111(2) EPC can be taken based on amended documents which do not meet the formal requirements under Rule 49(8) EPC. According to the amended Rule, the requirement to submit documents compliant with Rule 49(8) EPC needs to be fulfilled only at the same time as the other formal requirements listed in Rule 82(2) EPC.
2. This amendment will enter into force on 1 May 2016. It will apply to all European patents for which a decision under Articles 101(3)(a) and 106(2) or under Article 111(2) EPC is taken in oral proceedings on or after this date.
Submissions in oral proceedings in opposition
3. The amended provision only applies to submissions in oral proceedings in opposition or opposition appeal proceedings. In written opposition (appeal) proceedings the general principle continues to apply that a decision determining the text of the patent can only be based on documents compliant with the formal requirements, including those under Rule 49(8) EPC. It is noted that deletions are considered as typewritten amendments.
4. The EPO will continue to encourage patent proprietors to file documents compliant with Rule 49(8) EPC in oral proceedings in opposition. Moreover it will continue to provide technical facilities and support that allow compliance with these formal requirements, inter alia by providing online access to the patent specification (B-publication), which should be used as the starting point for amendments in the description.
5. However, pursuant to amended Rule 82(2) EPC the patent proprietor is no longer required to provide documents compliant with Rule 49(8) EPC during oral proceedings prior to the decision establishing the text of the patent to be maintained in amended form. He may choose to submit a formally compliant version of the amended text only in preparation of the publication of the patent maintained in amended form, i.e. within the time limit under Rule 82(2) EPC.
6. The decision maintaining the patent as amended (Article 101(3)(a) EPC) refers back to the amended documents on which the interlocutory decision under Articles 101(3)(a) and 106(2) EPC or the board of appeal decision under Article 111(2) EPC has been based.
7. Consequently, in the procedural situation governed by Rule 82(2), third sentence, EPC, [ 2 ] the formally deficient documents submitted during oral proceedings contain the authentic text of the patent maintained in amended form. The filing of formally compliant documents is a pure formality which has no bearing on the content of the patent maintained in amended form.
Procedure under Rule 82(2) and (3)
8. If, in oral proceedings, the interlocutory decision of the opposition division was based on documents which do not comply with Rule 49(8) EPC, i.e. which contain handwritten amendments, the opposition division will invite the proprietor in the communication under Rule 82(2) EPC to file a formally compliant version of the amended text. The invitation will specify the formally deficient amended paragraphs and/or claims for which replacement paragraphs and/or claims need to be filed.
9. The same applies where a decision of the boards of appeal remits the case to the first instance with the order to maintain the patent on the basis of amended documents with handwritten amendments.
10. In reply to the invitation of the opposition division under Rule 82(2) EPC the proprietor will have to submit replacement paragraphs and/or claims which contain a formally compliant verbatim reproduction of the text as determined by the interlocutory decision of the opposition division or, as the case may be, the decision of the board of appeal.
11. The competent formalities officer will compare the replacement paragraphs and/or claims with the formally deficient paragraphs and/or claims in the text established by the interlocutory decision of the opposition division or the decision of the board of appeal. If the filed text is identical to the text with handwritten amendments, formally compliant and complete (i.e. contains all requested paragraphs and/or claims), the "Druckexemplar" will be composed using the B-publication and the replacement paragraphs and/or claims.
12. The requirements under Rules 82(2), third sentence, and 49(8) EPC are not fulfilled
(i) if no reply is filed within the relevant time limit;
(ii) if the replacement paragraphs/claims are incomplete;
(iii) if the replacement paragraphs/claims are formally deficient or
(iv) if there is divergence between the text of the formally deficient paragraphs and/or claims specified in the invitation under Rule 82(2) EPC and the text of the replacement paragraphs and/or claims.
13. Any such deficiency (i) – (iv) will trigger a communication under Rule 82(3) EPC declaring that the requirement to file a formally compliant verbatim version of the specified amended text passages has not been fulfilled and informing the proprietor that the missing act may still be performed within two months if a surcharge is paid.
14. If a formally compliant and complete version of the verbatim text of all specified amended paragraphs and/or claims is not submitted within two months from the receipt of the communication under Rule 82(3) EPC, the consequences of Rule 82(3) EPC will apply and the patent will be revoked.