T 0926/17 - (II) Rule 80

Key points

•  The OD maintains the patent in amended form based on AR-1. The opponent appeals. In their written submissions the appellant-opponent objects to the admissibility of the upheld version (auxiliary request 1 before the opposition division) ... as late filed.
• The Board gives as preliminary opinion that AR-1 is admissible. The opponent has no substantive comments on the point before the oral proceedings before the Board and the Board admits* the request. Nevertheless, the Boards reasoning seems to call for some comments.
• The Board: " The Board notes that Rule 80 EPC does not specify the point in time up to which amendment is allowed. Rule 80 EPC creates the legal basis for amendments, and Rule 116(2) EPC governs the deadline for doing so" 
• Rule 80 EPC was introduced as Rule 57a EPC 1973  in 1995. The official explanatory remarks are set out in Notice in OJ 1995, p.416. 
• It is correct that " Rule 80 EPC does not specify the point in time up to which amendment [in opposition] is allowed". As set out in said Notice, "  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged".
• The existing practice in 1995 was that limitations on the amendments "were justified by reference to Rules 57(1) and 58(2) [EPC 1973]" (as the Notice says) which provisions are now R.79(1) and R.81(3) EPC (see T256/19).
• I don't think that Rule 80 EPC creates the legal basis for amendments [in opposition]. The legal basis is Article 123(1), as discussed in R6/19.
• I'm not sure if the Board wished to imply that it could overturn a decision of an OD to admit an auxiliary request. Whether the Boards have such power seems to be controversial. 
• *) : The Board decided "not to overturn the decision of the opposition division to admit the (now) main request".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170926eu1.html

3. Admissibility of the main request (auxiliary request 1 before the opposition division).

In their written submissions the appellant-opponent objects to the admissibility of the upheld version (auxiliary request 1 before the opposition division) under Rule 80 EPC as late filed.

The board set out its preliminary opinion in its written communication as follows:

"The Board notes that Rule 80 EPC does not specify the point in time up to which amendment is allowed. Rule 80 EPC creates the legal basis for amendments, and Rule 116(2) EPC governs the deadline for doing so, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), IV.C.5.1.3. 5th paragraph.

The auxiliary request 1 before the Opposition Division (present main request) was filed before the time limit established by the summons of 9 March 2016 under Rule 116 EPC. [It] cannot thus be considered late filed under this provision. The relevant guidelines are set out in the then valid version GL (2016), E-V, 2.1 (E-V, 2.2 (b) does not apply as there was no negative opinion in the annex to the summons). It can be inferred that in the case amendments filed before the Rule deadline 116 should be admitted if they address a ground of opposition, Rule 80 EPC, but (5th paragraph) e.g. based on material taken from the description, then the opponent should be given an opportunity to respond. It is not apparent to the Board that the Division deviated from these guidelines."

At the oral proceedings before the board the appellant-opponent acknowledged that the division had followed due process but, without substantiation, called into question that process. Otherwise they referred to their written submissions and refrained from further comment on the board's preliminary opinion. Absent any further submissions from the parties and without substantiation of their criticism of EPO procedure, the board sees no reason to address that criticism or to deviate from its provisional opinion. It therefore decides not to overturn the decision of the opposition division to admit the (now) main request.