5.5.2 Late-filed requests
According to an approach frequently adopted by the boards, a request made after arrangement of the oral proceedings could be admitted and considered at the board's discretion under Art. 13(1) RPBA 2007 if (i) there were sound reasons for filing it so far into the proceedings (for example where amendments were occasioned by developments during the proceedings), (ii) the auxiliary request did not extend the scope of discussion determined by the grounds of appeal and the respondent's reply and (iii) the auxiliary request was clearly or obviously allowable (meaning that it had to be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully addressed the issue raised without giving rise to new ones) (see in particular T 1634/09, T 484/07, T 447/09, T 2344/09, T 1925/10, T 416/12, T 419/12, T 1605/14 and T 385/15; in T 416/12, T 419/12 and T 385/15, the board also referred to Art. 13(3) RPBA 2007). The amendments in question had to be liable, in principle, to serve as a basis for granting a patent (T 1748/08, T 2250/08).
In T 183/09 the board (citing T 397/01 in particular) explained in the context of Art. 13(1) and (3) RPBA 2007 that the boards had developed the following approach to exercising their discretion to admit late-filed amendments: Unless an amendment was justified by developments in the appeal proceedings – for example if it addressed objections or comments first raised in those proceedings – it would be admitted only if it did not extend the scope or framework of discussion determined by the decision under appeal and the statement of the grounds of appeal, and was moreover clearly allowable.
In T 81/03 the board found that requests filed shortly before the minimum deadline set by it in the summons to the oral proceedings also had to be regarded as belated where they contained points which could only be dealt with properly in an additional written phase. See also T 518/08.
In T 253/06, the board held that it was permissible under Art. 13(3) RPBA 2007 to regard as belated auxiliary requests filed after oral proceedings had been arranged but within the prescribed period, if those requests were not substantiated, i.e. not accompanied by reasons explaining why the amendments had been made and how they were intended to overcome the objections raised in the course of the proceedings (T 2422/09, T 351/10, T 2497/10). This conclusion holds all the more true, if such an unsubstantiated request is filed only shortly before the oral proceedings. In this respect an ex-parte is not different from an inter-partes case (T 1278/10).
Amended claims filed at such a late stage should be clearly allowable in the sense that it can be quickly ascertained that they overcome all outstanding issues without raising new ones (T 1126/97, T 1993/07, T 183/09).
Similarly, the board in T 1443/05 refused under Art. 13(3) RPBA 2007 to admit a second auxiliary request because, as a result of its late filing, the question whether it met the requirements of Art. 123(3) EPC 1973 could not be answered without adjourning the oral proceedings (see also T 1026/03, T 1305/05, T 455/06).