T 0406/86 - Rule 79 and Rule 81

Key points

• Because Art.114 only refers to holding facts and evidence inadmissible, the question arises of what provision of the EPC provides the basis for holding amended claims inadmissible in opposition proceedings and in opposition appeals?
• As noted in T1914/12, “The RPBA can help in clarifying and interpreting the EPC but they cannot confer on the boards any powers that the EPC does not give them” (CLBA VII.1.4).
• This old decision T 0406/86 provides an analysis.
• “Although Rules 57 and 58 EPC [1973] directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments [i.e. auxiliary requests] to be allowed [i.e. admitted] only if it [=the OD] decides after exercising due discretion that it [=the OD] regards them as appropriate and/or necessary in the above sense. "
• Rule 58(2) EPC 1973 corresponds to Rule 81(3) EPC 2000 which provides that: “In any communication under Article 101, paragraph 1, second sentence, the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings.”
• These Rules apply equally in appeal (R.100(1) EPC 2000, Rule 66(1) EPC 1973).
• I just highlight that the Board derived the principle that late-filed claim requests in opposition can be held inadmissible from a textual analysis of the Implementing Regulations.
•  The legal basis for Rules 75 57 and 58 EPC 1973 was Article 101(2) EPC 1973: “In the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations, the Opposition Division shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Opposition Division, on communications from another party or issued by itself.” (now in Article 101(1) EPC 2000).
• See also T 0295/87 (link): "Although Article 101(2) and Rule 57 EPC [1973] only specifically refer to the criteria which the Opposition Division should use when considering whether to invite the filing of observations, in the Board's view it is clearly and necessarily implicit in these provisions that, in the absence of an express invitation from the Opposition Division, the parties may only file observations as a matter of discretion, when the Opposition Division considers them to be "necessary" or "expedient", in the sense discussed above. It would make a nonsense of these provisions to interpret them as providing that the Opposition Division should only invite observations from parties when it is considered "necessary" or "expedient", but that the parties can file observations as a matter of right even when they are unnecessary or inexpedient. (In this connection reference is made to Decision T 406/86 dated 2 March 1988, OJ EPO 1989, 302)."  it should be recognised that, in appropriate cases, both the Opposition Division and the Boards of Appeal have the power, and indeed the duty, to refuse to admit observations and/or supporting documents for consideration in the opposition and, respectively, the appeal, in the exercise of discretion under Articles 101(2) and 114(2) and Rule 57(3) EPC [1973]."
• Though here in T 0295/87 the focus is on what is now Rule 80 EPC 2000 (the substantive ground for inadmissibility of amended claims in opposition). In T 406/86, the amendments were late filed and not prima facie clear.

EPO T 0406/86 - link (German) - English OJ version

3.1 In opposition proceedings (including related appeal proceedings) the question whether to allow the patent proprietor's proposals for amendments to the description or claims is left to the Opposition Division and Board of Appeal, which must exercise due discretion in the matter. This derives from the relevant provisions of the EPC as follows:

3.1.1 Article 101(2) EPC lays down that examination of the opposition (i) shall be conducted in accordance with the provisions of the Implementing Regulations and that (ii) "the Opposition Division shall invite the parties, as often as necessary, to file observations ... on communications from another party or issued by itself."

3.1.2 Point (ii) relates primarily to observations and not to amendments to the documents.

3.1.3 As for point (i) Rule 57(1) EPC stipulates that the Opposition Division must invite the patent proprietor, when first informing him of the opposition, "to file his observations and to file amendments, where appropriate, to the description, claims and drawings" within a specified period. Even at this early stage, therefore, amendments should be requested from the patent proprietor only if this seems appropriate in the light of the grounds submitted for the opposition.

3.1.4 Rule 58(2) EPC concerns subsequent communications to the patent proprietor under Article 101(2) EPC. It lays down that, where appropriate, the patent proprietor must be invited "to file, where necessary, the description, claims and drawings in amended form". The double caveat in this sentence represented by the words "where appropriate" and "where necessary" emphasises the need for caution in inviting the patent proprietor to make amendments during opposition proceedings. In other words, he should be invited to do so only when it is "appropriate" and the amendments should be limited to what is "necessary" in the light of the grounds submitted for the opposition.

3.1.5 Although Rules 57 and 58 EPC directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments to be allowed only if it decides after exercising due discretion that it regards them as appropriate and/or necessary in the above sense. It would not be consistent with the general sense of these rules to interpret them as meaning that the Opposition Division could invite the patent proprietor to make amendments only if they were appropriate and necessary, but that he actually had the more far-reaching legal right to have inappropriate and unnecessary amendments incorporated.

3.1.6 Article 102 EPC sets out the options available when deciding on an opposition. If the grounds for opposition do not prejudice the maintenance of the patent as it stands, the Opposition Division rejects the opposition in accordance with Article 102(2) EPC and in that case it would clearly be inappropriate and unnecessary to admit amendments. If on the other hand there are grounds for the opposition which prejudice the maintenance of the European patent (Article 102(1) EPC), it is normally appropriate to give the patent proprietor an opportunity of making amendments to enable the patent to be maintained within the meaning of Article 102(3) EPC. However, the Opposition Division must maintain it only if the amendments are "appropriate" and "necessary" in the senses outlined above.

3.1.7 Limited consideration of amendments helps expedite and streamline opposition proceedings and it may be pertinent to recall in this connection that a European patent against which opposition has been filed is of its nature a set of national patents within the meaning of Article 64(1) EPC. Opposition proceedings before the European Patent Office constitute the only exception to the rule that a European patent once granted is subject to the national jurisdiction of the Contracting States.

3.1.8 An opposition taken to appeal is examined under Article 110(2) EPC, whose provisions are essentially the same as those of Article 101(2) (cf. points (i) and (ii) of 3.1.1). Further details are laid down in Rule 66(1) EPC, which states that - unless otherwise provided - "the provisions relating to proceedings before (the Opposition Division) ... shall be applicable to appeal proceedings mutatis mutandis".

3.1.9 In the Board's view this means that the law does not guarantee a patent proprietor the right to have proposed amendments incorporated when an opposition is taken to appeal; whether or not they are will depend rather on whether the Board judges them to be "appropriate" and "necessary" (see above). When taking a decision under Article 111(1) EPC the Board may, exercising due discretion, decide not to allow proposed amendments which it regards as inappropriate or unnecessary.