3.3. Amendments or corrections filed in response to the communication under Rule 71(3) EPC
3.3.2 Amendments and corrections requested according to Rule 71(6) EPC
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R. 71(6) EPC reads as follows: "If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the examining division shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings". See also Notice from the EPO dated 8 June 2015 concerning the possibility to waive the right to a further communication under Rule 71(3) EPC, OJ 2015, A52; Guidelines C‑V, 4.11 – November 2018 version.
All of the amendments or corrections requested by the applicant have to be reasoned, in particular those which have not been on file yet (CA/81/10, Rev 1).
Where amendments or corrections are not admitted, or where they are admitted but not considered allowable, examination will be resumed (Guidelines H‑II, 2.5.2 – November 2018 version).
The boards of appeal have confirmed in their case law (e.g. T 1064/04) that the principles set out in G 7/93 (OJ 1994, 775) also apply after the structural amendment of R. 51 EPC 1973 in 2002 (CA/81/10, Rev 1).
In T 1567/17 the board held that the applicant's remark in a response under R. 71(6) EPC that an amended feature "can also be omitted if regarded as violating Art. 123(2) EPC" could not be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimated that the applicant would accept the issue of a new communication under R. 71(3) EPC on the basis of the amended set of claims without said feature. The appellant had been given no opportunity to respond to the division’s opinion on this issue and the board held that the direct refusal of the application by the examining division was in violation of Art. 113(1) EPC. Surrender of a right cannot be simply presumed (referring to G 1/88, OJ 1989, 189; T 685/98, OJ 1999, 346).
- Case law 2019
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In T 1567/17 the board held that the applicant's remark in a response under R. 71(6) EPC that an amended feature "can also be omitted if regarded as violating Art. 123(2) EPC" could not be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimated that the applicant would accept the issue of a new communication under R. 71(3) EPC on the basis of the amended set of claims without said feature. The appellant had been given no opportunity to respond to the division's opinion on this issue and the board held that the direct refusal of the application by the examining division was in violation of Art. 113(1) EPC. Surrender of a right cannot be simply presumed (referring to G 1/88, OJ EPO 1989, 189; T 685/98, OJ EPO 1999, 346).