R 0006/19 - Amendments in opposition

Key points

• The Enlarged Board: “The basis for a board's (and opposition division's) discretion to admit or not claim requests is Article 123(1) EPC”
• “ the amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations. These provisions are stipulated in Rules 81(3) EPC for opposition proceedings and in Rule 137 EPC for examination proceedings.”
• “Rule 100(1) EPC provides that provisions relating to proceedings before the department which has taken the decision impugned shall apply to appeal proceedings. For such proceedings the exercise of discretion of a board with regard to admitting or not new claim requests is further specified in Articles 12 and 13 RPBA.”
  
  
• “The right, found in the second sentence of Article 123(1) EPC, to at least one opportunity to amend, is not extended to a patent proprietor in opposition proceedings, where the opposition division has the discretion, given in the first sentence of Article 123(1) EPC, not to admit such requests. In such proceedings an opportunity to amend shall be given only where necessary (Rule 81(3) EPC). This reflects the fact that opposition proceedings are inter partes and hence involve the EPO in balancing the interests of both parties.”
• As a comment, this is codified in Rule 80 EPC: “the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has not been invoked by the opponent.” Hence, there is no opportunity for tidying up the claims, unlike under the Rule 70a or Rule 161(1) response in examination.
• The above remark of the Enlarged Board is presumably without prejudice to Article 113(1) EPC.
• The Enlarged Board does not cite any case law, but the matter was also reviewed in recent decision T0966/17 (referring in r.2.2.1 to Art. 123(1)) and is in fact established case law since T0406/86 which I  posted about in July 2020. 

R 0006/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/r190006eu1.html

Does a board of appeal have a power not to admit claim requests?

5. The Petitioner has argued that a board of appeal has no power not to admit claim requests. The Petitioner bases this argument upon the wording of Article 114(2) EPC which states that the EPO may disregard facts or evidence which are not submitted in due time by the parties. The Petitioner argues that claim requests are neither facts nor evidence and hence Article 114(2) EPC cannot be the basis for a power to disregard claim requests.

6. The Enlarged Board considers that Article 123(1) EPC is the basis for the EPO's discretion whether to admit or not admit claim requests. It is useful to look at the language of this article:

"The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. In any event, the applicant shall be given at least one opportunity to amend the application on his own volition."

7. The first sentence of this article states the general possibility to carry out amendments in patent applications and in patents. However, the amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations. These provisions are stipulated in Rules 81(3) EPC for opposition proceedings and in Rule 137 EPC for examination proceedings.

8. The second sentence of Article 123(1) EPC explicitly provides applicants with a right - "In any event ... shall be given" – to at least one opportunity to amend an application. Were the first sentence of Article 123(1) EPC to mean that the patent proprietor or applicant always has the right to amend their patent or application, the second sentence of Article 123(1) EPC would be redundant.

9. The right, found in the second sentence of Article 123(1) EPC, to at least one opportunity to amend, is not extended to a patent proprietor in opposition proceedings, where the opposition division has the discretion, given in the first sentence of Article 123(1) EPC, not to admit such requests. In such proceedings an opportunity to amend shall be given only where necessary (Rule 81(3) EPC). This reflects the fact that opposition proceedings are inter partes and hence involve the EPO in balancing the interests of both parties.

10. Rule 100(1) EPC provides that provisions relating to proceedings before the department which has taken the decision impugned shall apply to appeal proceedings. For such proceedings the exercise of discretion of a board with regard to admitting or not new claim requests is further specified in Articles 12 and 13 RPBA.

11. In conclusion, the Enlarged Board rejects the argument of the petitioner that a board of appeal has no power not to admit new claim requests. Relying on the regulatory framework presented above, it appears not necessary to answer whether also Article 114(2) EPC provides a basis for refusing such a request.