T 1092/23 - Replacing auxiliary requests after a remittal

Key points

• In this opposition case, the Board remitted the case in the first appeal for further prosecution, after finding that the then main request and AR-1 were not allowable. At that time, AR-2 to 10 were pending. The proprietor thereafter filed new claim requests in the procedure before the OD. The OD admitted these requests and found one of them to be allowable. The opponent is unhappy and appeals."The EPC does not contain any limitations beyond Article 111(2) EPC regarding the scope of examination after a case has been remitted by a board of appeal. The appellants have not demonstrated any such legal basis.
• The wording of the operative part [order of the decision in the first appeal] "remitted for further prosecution" cannot be interpreted as meaning that the scope of the examination is limited to the stage of the proceedings as it existed immediately before the Board of Appeal, in particular to auxiliary requests 2 to 10 pending at that time. Such an interpretation finds no support in the wording of the operative part."
• After the case has been remitted to the Opposition Division, the following general standards for the admissibility of requests apply, as they also applied in the first stage of the opposition proceedings. [...] ... even before the expiry of a period set under Rule 116(1) EPC for preparing oral proceedings, the opposition division has discretion not to admit requests unless they are admissible under another provision. The fact that an amendment is filed within the period under Rule 116(1) EPC does not mean that it must automatically be taken into account. The question raised by the appellants as to whether Rule 116(1) EPC applies only to the first summons to oral proceedings issued in the opposition proceedings is therefore irrelevant to the decision.
• In exercising discretion, the established criteria shall be taken into account, in particular prima facie admissibility, complexity, procedural economy, stage of the proceedings and a reaction to new developments in the proceedings."
• " In the present case, there is also no evidence of procedural abuse by the patent proprietor and current respondent."
• "In view of the foregoing, there is no exception in the present case to the principle referred to by the Board in its preliminary opinion, according to which there is no legal basis for excluding from the proceedings a request which the Opposition Division has admitted into the proceedings and on which it has decided on the substance"
• The Board finds the current Main Request to be allowable.
  
  
• The decision also includes the following paragraph, which seems very useful (in translation, point 1.10 of the reasons): "The opposition division's discretion to admit amended requests into the proceedings arises from Article 123(1) EPC, first sentence, in conjunction with Rules 79(1) and 81(3) EPC. According to Article 123(1) EPC, a European patent application and a granted European patent may be amended in proceedings before the European Patent Office within the framework of the Implementing Regulations. In opposition proceedings, Rule 79(1) EPC gives the patent proprietor the opportunity to make amendments to the description, claims, or drawings within a time limit set by the opposition division. The admission of more extensive amendments filed at a later stage in the proceedings, however, is subject to the discretion of the opposition division. This follows, inter alia, from Rule 81(3) EPC, which provides that the patent proprietor is given the opportunity to comment or amend "where appropriate", which implies a discretionary decision by the opposition division (in accordance with T 0966/17, point 2.2.1 of the Reasons)."
• So, it is not about Rule 80 EPC here.
• Rule 79 also recites "where appropriate". Rule 81(3) recites "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t231092du1