T 2186/12 - Fresh grounds and amendments

Key points

• Amended claims were filed in this opposition appeal. The Board refuses to consider sufficiency of disclosure because it was a fresh ground of opposition and the patentee did not approve its consideration (citing G10/91)
• The decision seems to depart from established case law: " Amendments must be examined fully for compatibility with the EPC. Thus, where the respondents (opponents) first raise an objection under Art. 100(b) EPC during the appeal proceedings to an amended claim, the appellants cannot [] refuse permission to discuss the new ground (T 27/95)." 

EPO T 2186/12 - link

Reasons for the Decision

1. Admissibility of the request (Article 13(1) RPBA)

1.1 Under Article 13(1) RPBA, the admission of any amendment to a party's case after it has filed its grounds of appeal or reply is at the board's discretion. When exercising such discretion, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy should be considered.

1.2 Since the request was filed after oral proceedings had been arranged, it constitutes an amendment to the appellant's case within the meaning of Article 13(1) RPBA.

1.3 The board observes that claim 1 at issue is limited to the specific type of reaction which was the subject-matter of dependent claim 10 as granted, namely steam reforming of a hydrocarbon. [...]

1.4 The board thus considers that the amendments made in claim 1 are a fair reaction to the decision of the opposition division and to the preliminary opinion of the board. Since the amendments are not unexpected and are not so complex that they would notably change the scope of discussion, and since they could prima facie lead to an allowable set of claims, they are admitted into the proceedings.

[...]

4. Sufficiency of disclosure - Article 83 EPC

The ground of opposition under Article 100(b) EPC not being part of the opposition proceedings, it is a fresh ground of opposition. Since the patentee did not approve its consideration, sufficiency of disclosure cannot be questioned (G 10/91, Reasons 18).