T 1213/19 - Article 123(1) EPC in conjunction with Rule 81(3)

Key points

• "Since the parties in the present case have not objected as to which provision in the EPC provides a legal basis for the discretion to admit amendments to claims, the present board does not see a need to discuss whether Article 123(1) EPC or also Article 114(2) EPC and/or Rule 116(2) EPC constitute an appropriate legal basis."
• " With a view of deciding the underlying case, the present board concurs with the jurisprudence having found that the first sentence of Article 123(1) EPC in conjunction with Rules 81(3) and 100(1) EPC gives the deciding organ a discretionary power to consider amendments filed in opposition and opposition appeal proceedings (see e.g. R 6/19, Reasons 6 to 11 and T 966/17, Reasons 2.2.1). According to Rule 81(3) EPC, the opportunity for a patent proprietor to amend the description, claims and drawings in opposition proceedings is given only where necessary. Under Rule 100(1) EPC, this provision also applies in opposition appeal proceedings, albeit further subject to the provisions of the Rules of Procedures of the Boards of Appeal, particularly Articles 12 and 13 RPBA."
• The decision was issued in writing on 22.12.2022; i.e. after shortly after decision T 1776/18 was issued in writing on 08.12.2022.
  

EPO T 1213/19

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/t191213eu1.html

19. The respondent further argued that it should be given the opportunity to react to the belated filing of document D8 and amend the claims accordingly. Reference was made to Article 113(1) EPC.

Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC, according to which the EPO is forbidden from considering and deciding upon any text of an application or a patent other than that "submitted to it, or agreed, by the applicant or proprietor of the patent ...", give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1).

The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account.

Since the parties in the present case have not objected as to which provision in the EPC provides a legal basis for the discretion to admit amendments to claims, the present board does not see a need to discuss whether Article 123(1) EPC or also Article 114(2) EPC and/or Rule 116(2) EPC constitute an appropriate legal basis. With a view of deciding the underlying case, the present board concurs with the jurisprudence having found that the first sentence of Article 123(1) EPC in conjunction with Rules 81(3) and 100(1) EPC gives the deciding organ a discretionary power to consider amendments filed in opposition and opposition appeal proceedings (see e.g. R 6/19, Reasons 6 to 11 and T 966/17, Reasons 2.2.1). According to Rule 81(3) EPC, the opportunity for a patent proprietor to amend the description, claims and drawings in opposition proceedings is given only where necessary. Under Rule 100(1) EPC, this provision also applies in opposition appeal proceedings, albeit further subject to the provisions of the Rules of Procedures of the Boards of Appeal, particularly Articles 12 and 13 RPBA.