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
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
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
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
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).