EPO: Appeal board of EPO provides guidance on amendments filed late

February 04, 2019

In opposition proceedings before the EPO, the formal admissibility of amendments filed late by proprietors is a frequently debated topic and differently decided on. A recent appeal decision, T 500/15, reiterates the criteria for the assessment of admissibility of amendments that are filed late and the specific criteria the competent departments of the EPO should apply when exercising their discretionary powers with regard to admissibility.

Decision T 500/15 concerns an appeal against a first instance decision revoking a European patent. In the first instance opposition proceedings, the patentee had not filed a substantiated reply to the opposition. No amendments or substantiated arguments were submitted by the patentee within the time limit set by the EPO for making written submissions ahead of the oral proceedings. The patentee had, however, eventually filed an amended set of claims as his main request 10 days prior to the oral hearing. Following a debate of only 15 minutes at the oral proceedings, the opposition division had decided not to admit the amended claims into the proceedings and thus to revoke the patent.

The opposition division's reason for not admitting the amended claims was, in particular, that the examination of the amended claims would have required extensive discussions, and that admitting them into the proceedings would have compromised the need for procedural economy.

In the subsequent second instance proceedings, the appeal board entrusted with the matter came to the conclusion in decision T 500/15 that the first instance department had not adequately exercised its discretionary powers with regard to the admissibility of the amended claims. The board of appeal in particular held that the department of first instance had failed to examine the amended claims on their substantive merits. According to the board, procedural aspects, notably the need for procedural economy, are to be considered only in conjunction with a case-specific, substantive examination of the prima facie permissibility of the amended claims. Such substantive assessment had not been conducted by the opposition division. The case is therefore now being remitted back to the department of first instance for further prosecution.