3. The grant stage in examination
3.6. Amendments after the decision to grant
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In T 798/95 the decision to grant the European patent was handed over by the formalities section of the examining division to the EPO postal service for notification. The request for amendment of the application under R. 86(3) EPC 1973 was filed on the same day at 6.47 pm, thus after completion of the proceedings. Referring to G 12/91 (OJ 1994, 285), the board held that a request for amendment under R. 86(3) EPC 1973 filed after completion of the proceedings up to grant before an examining division was to be disregarded, even if the filing of the request and the completion of the proceedings occurred on the same date. See also Guidelines H‑II, 2.6 – November 2018 version.
- T 646/20
Addition of further Designation States after grant (no).
- Case law 2020
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In T 646/20 the board found no support for any obligation of the examining division to defer a decision of grant until the expiry of the four-month period in a case where the applicant had at any given time within this period of time given approval to grant and thereby allowed the examining division to issue a corresponding decision. It would be rather strange if the examining division had to defer a decision for the eventuality that the applicant had second thoughts. In the case in hand, following the R. 71(3) EPC notification, the applicant gave its explicit approval to issue the decision to grant; however, following the decision to grant, the appellant then voiced its disapproval together with a request for further processing – filed on the date that the decision to grant was due to be published in the European Patent Bulletin. The board distinguished the case in hand from T 1/92 (OJ 1993, 685), which related to contradictory statements of the applicant prior to the decision of grant being taken by the examining division. The board in the case in hand was also not convinced by the appellant's argument that an approval sent in response to a R. 71(3) EPC communication could not be interpreted as a waiver of further options or remedies. Every approval of the text of a patent implied a waiver of the remaining infinity of texts in which a patent could be granted. The board noted in its catchword that further Member States could not be designated after grant. With reference to decision G 1/10 (OJ 2013, 194), the board concluded that in the interest of legal certainty, the patent in the version as granted should no longer be open to amendments and that the applicant had had "adequate means at his disposal" to remedy beforehand. In the board's view, it was incumbent on the applicant to verify the complete file in order to spot any inconsistencies it may wish to draw attention to. Inconsistencies related to text and the designated Member States in the communication under R. 71(3) EPC and not raised in response thereto must be considered as approved by applicant.