2.2.2 Amendments filed in preparation for or during oral proceedings 

Rule 116(2) imposes the same obligations on the applicant or patent proprietor when submitting new documents which meet the requirements of the EPC (i.e. new amendments to the description, claims and drawings) as Rule 116(1) imposes on the parties in submitting new facts and evidence.

Here the The examining or opposition division also has the discretion to disregard amendments because they are filed too late before the oral proceedings filed after the date set under Rule 116(1) as being late-filed unless they have to be admitted because the subject of the proceedings has changed. Amendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed.

The following are examples of what would normally constitute a change of subject of the proceedings:

–the opposition division admits under Art. 114(1) new facts and evidence or a new ground of opposition because they are prima facie relevant;

–the examining division cites a further relevant document for the first time (H‑II, 2.7);

–the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent.

In these examples, a request from the applicant or proprietor for a corresponding amendment cannot be rejected as being late-filed even if submitted after the date set under Rule 116(1). If, however, after a change of opinion by the division, the applicant or proprietor files a new request that reintroduces subject-matter against which the division has already raised an objection, the division has discretion to disregard the new request due to it being prima facie not allowable.

On receipt of amendments filed after the final date set under Rule 116(1), the division therefore first analyses whether the amendments were filed in due course in response to a change of the subject of the proceedings. Only if this is not the case does the division have the discretion to disregard the amendments. This discretion is to be exercised according to the principles set out in E‑VI, 2.2.3. The mere fact that amendments are filed after a given date is not on its own a legal basis for not admitting them.

For example, if new facts and evidence or a new ground of opposition are admitted under Art. 114(1) because they are prima facie relevant, a request of the proprietor for corresponding amendment would have to be admitted even if submitted after the above final date because the subject of the proceedings has changed. The same applies if the examining division cites a further relevant document for the first time (H‑II, 2.7).

Equally, amendments that are submitted by the applicant or proprietor in due course in response to objections raised by the division which depart from a previously notified opinion may not be rejected as late-filed.

For instance, if the opposition division departs from its provisional opinion set out in the annex to the summons and – contrary to that opinion – concludes during oral proceedings that an objection prejudices the maintenance of the patent, a request of the proprietor for (further) amendment will normally be admitted into the proceedings.