2.4.1 Discretion of the examining division under Rule 137(3) EPC

The discretion given to the examining division under R. 137(3) EPC is intended to ensure that the examination procedure is brought to a conclusion in as few actions as possible. In exercising its discretion the examining division must consider all relevant factors; in particular, it must balance the applicant's interest in obtaining a patent which is legally valid and the EPO's interest in bringing the examination procedure to a close in an effective way possible (Guidelines C‑IV, 3; H‑II, 2.3 – March 2022 version). In giving or withholding such consent, the examining division has to exercise its discretion responsibly and in accordance with the principles as set out in G 7/93 (OJ 1994, 775) which, although made in relation to amendments made in the pre-grant stage, can be considered generally applicable to new requests put forward at a late stage of the proceedings (see T 1064/04). Furthermore, the exercise of discretion under R. 137(3) EPC needs to be reasoned (see e.g. T 182/88, OJ 1990, 287; T 183/89; T 755/96, OJ 2000, 174).

In G 7/93 the Enlarged Board pointed out that in the exercise of its discretion under R. 86(3) EPC 1973 (now R. 137(3) EPC), an examining division was required to consider all relevant factors which arise in a case. In particular, it must consider both the applicant's interest in obtaining a patent which is legally valid in all of the designated states, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must balance these interests against one another (see also T 1982/07). Once an examining division has exercised such discretion, a board of appeal should only overrule it if it comes to the conclusion either that the examining division did not exercise its discretion in accordance with the right principles or that it exercised its discretion in an unreasonable way and had thus exceeded the proper limit of its discretion (see T 237/96 with particular reference to G 7/93, OJ 1994, 775; T 182/88, OJ 1990, 287; see also T 937/09, T 1214/09, T 918/14).

In T 573/12 the board noted that, as set out in G 7/93 (OJ 1994, 775), an examining division, when considering whether to admit an amendment or not, is required to consider all relevant factors which arise in the case. In particular it must consider and balance the applicant's interest in obtaining a patent and the EPO's interest in bringing the examination procedure to a close. In the case in hand, the examining division's first communication was rather vague and assessed the invention in rather general terms, without analysing the individual features. The appellant's subsequent amendment added some features to the independent claims. In the board's judgment, this was a bona fide reaction. Additionally, it was the first amendment which was dependent on the examining division's consent and the minutes showed that the examining division could and did discuss the added features. Admitting the request would not have involved excessive or unjustified additional work. Furthermore, the Guidelines (Part C‑VI, 4.7 – April 2010 version) stated: "Regarding less extensive amendments, the examiner should adopt a reasonable approach, trying to balance fairness to the applicant against the need to avoid unnecessary delay and excessive and unjustified additional work for the EPO." Given the above circumstances, the board held that the examining division did not properly balance all relevant factors and thus could not endorse the examining division's conduct.

In T 1045/18 the board reiterated that an examining division had to take all relevant factors into account when exercising its discretion under R. 137(3) EPC; in particular, it had to strike a balance between the applicant's legitimate interest in obtaining a European patent and the EPO's interest in conducting the examination proceedings efficiently. The relevant factors included the stage reached in the proceedings and whether the applicant had already had sufficient opportunity to amend the application. Another important factor to be considered was the extent to which the amendments were suitable to overcome an existing objection and did not manifestly – i.e. unequivocally and in an immediately apparent way – give rise to new ones. Clear or prima facie allowability was at most a criterion for the admissibility of late-filed amendments (Guidelines H‑II, 2.7.1) whereas the amended claim set at issue in this case had been filed within the period set under R. 116(2) EPC (see also T 222/21).

In T 937/09 the board stated that a proper exercise of the examining division's discretion under R. 137(3) EPC as to whether to admit amendments to a European patent application after the first communication meant, in its view, that the examining division had to admit amendments filed by the applicant together with the reply to a communication giving reasoned notice of a particular deficiency for the first time, if it could already have raised an objection to that deficiency in its first communication, and if the amendments could be regarded as an objectively suitable attempt to correct the deficiency.

In T 166/86 (OJ 1987, 372) the board held that the examining division would not be able to refuse its consent to an amendment if, for good reasons, the applicant was only at that late stage in a position to request the amendment, or if the requested amendment was obviously essential for him and to take it into account would not appreciably delay the grant procedure.

In T 229/93 the board found that in the circumstances of the case the examining division should have considered refusing to consent to the amendments pursuant to R. 86(3) EPC 1973, since the filing of such amendments after the expiry of the time limit for answering the first communication of the examining division in the form of a completely retyped description was contrary to the requirement of procedural economy (see T 113/92).

In T 951/97 (OJ 1998, 440) the board held that it was easier to secure an amendment at an earlier rather than at a later stage of the procedure. See also T 76/89, T 529/94, T 937/07. For instance, the board in T 674/17 exercised its discretion not to admit the new main request into the proceedings, in accordance with R. 137(3) and 100(1) EPC, since the new main request (submitted only after the board had sent a communication under Art. 15(1) RPBA 2007) amounted to the presentation of a fresh case.

In T 2324/14 the examining division had found that the auxiliary request "prima facie [did] not overcome the objections under Art. 84 EPC and Art. 83 EPC", and thus it did not give its consent under R. 137(3) EPC to it. The board noted that the EPC does not define what it means for an examining division to give or deny its consent to an amendment under R. 137(3) EPC. The boards of appeal had, however, accepted that the examining division could base its decision to deny consent to an amendment on prima facie considerations and that it could deny its consent to an amendment with prima facie deficiencies. However, the examining division had not limited its examination of the auxiliary request to prima facie considerations. In fact, the examining division had considered the auxiliary request fully, since it was able to give sufficient reasons for its conclusion that a patent could not be granted on the basis of that request. The examining division thus having considered the auxiliary request fully, the board took the view that there was no discretion left for the examining division "not to admit" it. In T 2026/15 the board confirmed these findings, adding that this meant that the examining division had implicitly admitted the auxiliary request and, equivalently, had given its consent under R. 137(3) EPC.

In T 1105/96 (OJ 1998, 249) the board noted that where an examining division had indicated that a further request in the form of an amended text for the main claim of an application would be allowable, it was difficult to imagine any circumstances in which it would be lawful for the examining division to deny the admissibility of such request, in the exercise of its discretion. Certainly, in the circumstances of the case in hand, the rejection in advance of such a further auxiliary request unless all preceding requests were abandoned was an abuse of procedure, an unlawful exercise of discretion under R. 86(3) EPC 1973 and thus a substantial procedural violation.

In T 2558/18, the board dealt with the binding effect on an examining division of a remittal with precisely specified documents for the purposes of R. 71(3) EPC. It observed that, under Art. 111(1), second sentence, EPC, the boards could either exercise any power within the competence of the department responsible for the decision appealed (alternative 1) or remit the case to that department for further prosecution (alternative 2). It summed the situation up as follows in its catchword: Where a board remits a case to the examining division for the grant of a patent in a precisely specified version, i.e. with precisely specified claims, description and drawings, the decision on this version is taken by virtue of the first alternative in Art. 111(1), second sentence, EPC. The version is binding on the examining division in accordance with the legal principle enshrined in Art. 111(2) EPC (res judicata), on the basis of which the remittal is also ordered. The procedure under R. 71(6) EPC is inapplicable in view of the binding effect arising from Art. 111(2) EPC by virtue of Art. 164(2) EPC. See chapter V.A.10.2.1 "Binding effect on examining divisions".