d) Principles for exercise of discretion 

(i) Criteria applicable at later stages of the proceedings - general

In T 491/09 the opposition division's decision to admit into the proceedings an auxiliary request filed during the oral proceedings was challenged before the board. In its decision the board concluded that the opposition division had properly exercised its discretion by taking into account the following criteria:

a) prima facie allowability (here: the division regarded the request as prima facie overcoming the opposition grounds based on Art. 100(b) EPC and Art. 100(c) EPC, and, as was evident from the minutes of the oral proceedings, no clarity objections had been raised).

b) procedural expediency/abuse of procedure (here: returning to written proceedings not necessary; conduct of the patent proprietor did not amount to an abuse of procedure, or an unwarranted advantage for it).

c) reasonable expectation that the opponents familiarise themselves with the proposed amendments in the time available (the minutes revealed that the opponent was given ample opportunity to familiarise themselves with the amended subject-matter).

For another decision approving the application of similar criteria (prima facie allowability, procedural economy, abuse of procedure, whether the parties could reasonably be expected to familiarise themselves with the proposed amendments in the time available) to a request filed ten days before the oral proceedings, see e.g. T 500/15, which also elaborates on the criterion of complexity of amendments as well as the need to give individualised reasons, taking into account the concrete request. The board also held in this decision that there was no legal basis for refusing to admit a request merely because it had been filed after a point in time specified by the opposition division.

In T 1930/14 the opposition division had considered the timing of the filing of the auxiliary request (which could have been filed earlier), its complexity and its prima facie allowability. The board was satisfied that the opposition division had exercised its discretion according to the right principles.

In T 1344/15, the admission by the opposition division of further requests filed during oral proceedings was approved by the board, because the filing was a reaction to a change of mind of the opposition division and an adequate attempt to overcome the relevant objection.

In T 368/16 the opposition division allowed the proprietor to file various auxiliary requests in the course of the oral proceedings. Request IIIb was admitted. Its process claim 1 was held to be novel but not its product claim 23. The proprietor then filed a further request consisting only of process claims 1 – 22 of request IIIb. This request IVa was not admitted by the opposition division. Based on the following considerations the board held that the opposition division had exercised its power of discretion under R. 116(2) EPC in an unreasonable way and by not applying the proper principles: The request per se was apt to overcome all the objections discussed so far during oral proceedings. Even if inventive step had still to be discussed, its filing could not be considered as an attempt to prolong unnecessarily the proceedings; on the contrary, since request IVa was based on a convergent limitation with respect to request IIIb and on a combination of features derived from the granted claims, it clearly restricted the issues remaining to be discussed. See, similarly, T 222/16.

In T 879/18 the board held that a patent proprietor should be given an opportunity to amend, if new facts and evidence have been admitted (here: new novelty objection first raised by the opponent at the oral proceedings, based on new documents and on a new interpretation of a term in claim 1), as the subject of the proceedings will have changed. In the case in hand, adding detail from the description was, in the board's view, an appropriate response and should have been admitted. Likewise in T 222/16, the board held that the patent proprietor should have been given at least one opportunity to file a new request in response to the new objection filed by the respondent-opponent for the first time on the final date set under R. 116 EPC. On the principles of the right to be heard and the fair treatment of the parties, see also T 487/13 (summarised in point b) above) and T 623/12.

(ii) Prima facie allowability

In numerous decisions, the boards have considered that an opposition division's decision not to admit prima facie unallowable requests filed at a late stage of the proceedings was a proper exercise of its discretion (see e.g. T 171/03, T 484/11, T 1737/12, T 108/14, T 2332/15, T 1710/18). In T 586/16 the board acknowledged that prima facie allowability was normally the correct criterion to be applied; however, in the case in hand the opposition division should have admitted the auxiliary request, since it was a reaction to a change of mind by the opposition division during the oral proceedings.

In T 2683/17 the board held that the opposition division, when admitting the 3rd auxiliary request filed at the oral proceedings, had exercised its discretion properly and according to the right criterion of prima facie allowability in considering that the amendments were prima facie suitable to overcome the Art. 123(2) EPC objection raised against the previous requests, and that further requirements, in particular compliance with Art. 84 EPC, were also prima facie met.

In T 222/16 the board observed that the 3rd auxiliary request filed during oral proceedings at first instance in response to a change of the subject of the proceedings should have been admitted under R. 116(2) EPC. Moreover, the board noted that, according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late-filed requests was their prima facie allowability in view of the objection under discussion. This criterion was fulfilled in the case in hand since the amendment in claim 1 was clearly suitable to overcome the objection under Art. 123(3) EPC. The amendment also overcame the objection under Art. 123(2) EPC which the division had found pertinent. Hence the request should have been admitted. For the board, the convergence criterion relied upon by the division was of secondary importance in the context of objections under Art. 123(3) EPC.

In T 84/17 the appellant (patent proprietor) argued that the opposition division had not exercised its discretion in accordance with the right principles, as it had only considered the timeliness of the filing without also considering the prima facie allowability of these requests. The board, however, concluded that the opposition division had in fact exercised its discretion in a reasonable way and had used the correct principles. The opposition division had correctly stressed that the auxiliary requests had been filed very late (during first-instance oral proceedings after the Chair had announced the conclusion that granted claim 1 lacked novelty) without appropriate justification, the underlying objections having been on file since the notice of opposition and their pertinence commented on in the annex to the summons. Moreover, the opposition division's decision not to admit the requests was not exclusively based on the unjustified lateness but also on the finding that the opponents could not be expected to deal with the specific restrictions of subject-matter introduced with these requests, i.e. the opposition division also considered the substance of the amendments. In the board's opinion, if the arguments in the particular case showed that some criteria weighed so heavily that other criteria could not outweigh them, it was not necessary to discuss all criteria.

(iii) Abuse of procedure

In T 28/10, the patent proprietor had defended a limited set of claims in the written proceedings but reverted to the claims as granted at the oral proceedings. The opposition division had exercised its discretion not to admit the request on the basis that it considered its late submission to be an abuse of procedure and that the proprietor itself had conceded that it did not meet the Art. 54 EPC requirements. The board could not see any improper exercise of discretion in this.

In T 2385/12, too, the patent proprietor reverted back to the claims as granted during the oral proceedings before the opposition division. The opposition division admitted this request. The board held, that while there may be instances where reverting to the claims as granted at a late stage of opposition proceedings would be seen as an abuse of procedure, the present specific circumstances (Art. 123(2) EPC objection addressed, no evidence of a deliberate attempt to mislead the opponent) indicated this not to be so in this case. See also T 1770/16.

On the concept of abuse of procedure, see also the decisions relating to the late submission of documents summarised in chapter IV.C.4.5.5, and in particular T 85/18, which held that abuse of procedure implied deliberate misconduct, not merely a lack of diligence.

(iv) Reasonable expectation that the opponents familiarise themselves with the proposed amendments in the time available

Whether the opponent could be expected to deal with the amendment during the oral proceedings (see above summary of T 491/09) was also considered an appropriate criterion in T 2415/13. Along similar lines, in T 281/99 the board approved the opposition division's admission of changes, filed during oral proceedings, which were minor (in addition to being in direct response to new objections).

In T 463/95 the board explained that consideration of a new or amended independent claim could reasonably be expected when such a new or amended claim results from a combination of features taken from granted claims which have been specifically opposed, since the opponents should already be familiar with the subject-matter (similarly T 577/97; distinguished in T 960/04).

In T 1261/13, the board held that the object and purpose of R. 116 EPC was to ensure that all parties and the division had enough time to thoroughly prepare for the oral proceedings. As a rule, therefore, requests meeting the R. 80 EPC requirements and filed before expiry of the time limit under R. 116 EPC were admissible. In the board's view, that also went for requests with claims containing features taken from the description.

In T 43/16, the opposition division had considered the proprietor's reverting to the granted claims two weeks before the oral proceedings to be inadmissible. The board, however, considered that it was not unreasonable to expect the opponent to revisit the granted claims and its own line of argument in the notice of opposition within that time frame.

(v) Exercise of discretion on the basis of the content of the amendment– as a rule no rejection of any further amendments without regard to its content

In general, the question whether an amendment is appropriate can only be answered on the basis of its content, i.e. after it has actually been submitted. To refuse any further amendment is only appropriate if it is evident after various unsuccessful amendments that the proprietor is not seriously trying to overcome the objections but is only delaying the proceedings (T 132/92; see also T 623/12 and T 1758/15, which refers to T 246/08).

In T 802/17 the opposition division had given the patent proprietor an opportunity to draft one additional request (German: "einen zusätzlichen Antrag zu formulieren") during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.

In decision T 756/18 the board found that the opposition division had overstepped the limits of its discretion by stating that it would admit only one auxiliary request and rejecting all other auxiliary requests from the outset for no apparent reason; it did not even examine whether the amendments could have overcome all the objections validly raised up to that point without giving rise to any new ones – which might have rendered them admissible. No abuse of procedure or delaying tactic on the part of the appellant was apparent from the file.