In T 416/12, the Board of Appeal at the European Patent Office (EPO) considered the admissibility of amendments submitted by the patent proprietor made 29 days before the date of oral proceedings. Whilst it is possible for the Board to admit such submissions, it was ruled that the amendments in question should not be admitted since it was too late to fairly deal with the submissions at the impending oral proceedings. The patent was subsequently revoked. This case provides confirmation as to how the relevant regulations may be interpreted regarding the timeliness required for filling submissions before oral proceedings at the EPO.

The oral proceedings concerned the request by the opponent (Hauni Maschinenbau) to set aside the earlier decision of the Opposition Division to maintain the proprietor’s patent in an amended form. The proprietor (GD Spa) requested that the patent be maintained on the basis of a main request, or otherwise, on the basis of new auxiliary requests that were filed 29 days before the date of oral proceedings and had the purpose of overcoming inventive step objections.

The Board of Appeal referred to Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA), according to which, the statement of grounds of appeal and the reply shall contain a party’s complete case. In this case, the auxiliary requests were filed three and half years after a reply had been filed. Furthermore, they were filed after oral proceedings had been arranged and after the deadline for filing observations had expired. The Board may admit amendments if there are good reasons for a late filing, but also taking into account the new subject matter submitted. As per RPBA 13(3) amendments should not be admitted after oral proceedings have been arranged “if they raise issues which the Board or parties cannot reasonably be expected to deal with before oral proceedings”.

Regarding the first point, the Board considered that the inventive step issue in question had already been extensively discussed and was therefore clearly not unforeseen.

Regarding the second point it was deemed that the amendments would require thorough investigation because they addressed the inventive step issue. Unhelpfully, the proprietor had not provided an explanation of why the claims of the auxiliary requests involve an inventive step. The Board and the opponent would not have time to consider or prepare for the new arguments before oral proceedings.

The proprietor tried to argue that the arguments it was introducing had been mentioned during opposition and therefore could not come as a surprise to the opponent. The Board rejected this view as it would be unfair for opponents to have to predict what arguments the other party might later introduce into proceedings.

Given that the proprietor had from 29 October 2012 (four months from the filing of the statement of grounds of appeal set as the deadline for filing a reply) to 1 December 2015 (summons to oral proceedings) to submit amendments to the case without being subject to the requirements of RPBA 13(3), the ruling is not wholly surprising. Had the amendments been submitted before oral proceedings were arranged, it is possible that the Board would still not have allowed the amendments due to the complexity of the subject matter.

This case confirms that a complete case should be filed by a respondent as part of its reply to the statement of grounds of appeal to guarantee admissibility, and any amendments to its case should be filed as early as possible. The fact that arguments may have been presented earlier in proceedings is not an excuse for late-filing such arguments. Late-filed amendments may only be admitted if they clearly address specific issues that only come to light later in the proceedings (such as during the oral proceedings themselves).