8.2.2 Maintenance of European patent as amended

The long-established practice of the EPO of delivering interlocutory decisions subject to appeal when the opposition division intends to maintain a patent as amended was acknowledged by the Enlarged Board of Appeal in G 1/88 (OJ 1989, 189).

According to Art. 101(2) and (3)(a) EPC (Art. 102(1) to (3) EPC 1973) a decision on an opposition to a European patent can involve revocation of the patent, rejection of the opposition or maintenance of the patent as amended, the latter requiring the publication of a new European patent specification. Under R. 82(2) EPC (R. 58(5) EPC 1973) a prerequisite for maintenance of the patent as amended is that the fee for publishing (former printing fee) be paid. With these regulations in mind, the EPO very early on adopted the device of an interlocutory decision, for which there is no express provision, in order to establish in the first place the text of the amended specification. Only after this interlocutory decision has become final (or the case has been decided on appeal) are the fee for publishing (formerly printing) and a translation of the claims in the other official languages requested pursuant to R. 82(2) EPC (R. 58(5) EPC 1973). Additionally, as of 1 May 2016 a typed version of the amended text passages is requested where during oral proceedings only handwritten amendments have been filed (R. 82(2) EPC as in force since 1 May 2016, OJ 2016, A22). Once these requirements have been fulfilled what is then a non-appealable final decision on maintenance of the patent as amended is given and the new patent specification is published.

An interlocutory decision which determines the text of the patent to be maintained as amended can of course only be given if there is a text "submitted or agreed" by the patent proprietor pursuant to Art. 113(2) EPC.

In T 390/86 (OJ 1989, 30) the board held that neither Art. 102(3) EPC 1973 (which partly became Art. 101(3)(a) EPC and partly was incorporated in R. 82 EPC) nor R. 58(4) EPC 1973 (R. 82(1) EPC) precluded an opposition division from giving decisions on substantive issues in the opposition before sending a communication under R. 58(4) EPC 1973, and before "deciding to maintain the patent in amended form". For example, an opposition division could during the course of an opposition make a (final) interlocutory decision (either orally or in writing) that a particular proposed amendment contravened Art. 123 EPC. Similarly, an opposition division could make a (final) interlocutory decision during an opposition that the main claim, for example, of the opposed patent could not be maintained. Such a substantive interlocutory decision was not a decision actually to maintain the patent in amended form, but was preliminary to such a decision. The taking of such substantive interlocutory decisions during the course of opposition proceedings was desirable both in order to move the proceedings forward towards a conclusion, and, in appropriate cases as envisaged in Art. 106(3) EPC 1973 (Art. 106(2) EPC), to allow a party to appeal such an interlocutory decision before the opposition proceedings were terminated. It was further held that where a final substantive decision had been given, an opposition division had no power thereafter to continue examination of the opposition in relation to the issues which were the subject of that decision. Further submissions from the parties relating to such issues were inadmissible.

In T 89/90 (OJ 1992, 456) the opponents had lodged objections to an interlocutory decision finding that the patent as amended and the invention to which it related met the requirements of the EPC. The legal basis for interlocutory decisions was provided by Art. 106(3) EPC 1973. The board observed that the EPC contained no general rules as to when an interlocutory decision could or should be delivered. The relevant department therefore had to use its discretion in judging whether an interlocutory decision was appropriate in an individual case. This involved weighing up various considerations such as whether an interlocutory decision would accelerate or simplify the proceedings as a whole (clarifying a disputed question of priority, for example, could be of key importance for the form and length of the subsequent proceedings) and clearly also included the issue of costs. In the board's view, it was clear that the established practice of delivering appealable interlocutory decisions under Art. 106(3) EPC 1973) (Art. 106(2) EPC) where a patent was maintained as amended was based on the weighing up of such cost aspects. The board concluded that this practice was both formally and substantively acceptable.

In G 9/92 date: 1994-07-14 (OJ 1994, 875), the Enlarged Board of Appeal set out the implications of an admissible appeal against an interlocutory decision of the opposition division concerning maintenance of the patent in amended form, first, where the sole appellant is the patent proprietor and, secondly, where the sole appellant is the opponent. In the first case, neither the board nor the non-appealing opponent as a party as of right may challenge the maintenance of the patent as amended in accordance with the interlocutory decision. In the second case, the patent proprietor is primarily restricted to defending the patent in the form in which it was maintained by the opposition division. The board may reject as inadmissible any amendments proposed by the patent proprietor as a party as of right if they are neither appropriate nor necessary. For further details of the prohibition on reformatio in peius and its application in board decisions, see chapter V.A.3.1.