Defending a patent attacked by an opposition usually comprises requests to maintain said patent in amended form, in particular with a restricted claim set. Such requests are to be filed as early as possible in proceedings in front of the European Patent Office (EPO) in order to avoid risks of their non-admittance. The latest and therefore least favorable point of time is filing in the course of an oral proceedings of a Board of Appeals, even more so under the stricter provisions of the 2020 revision of the Rule of Procedure.
In decision T 0732/21 (not to be published), the Board of Appeal, however, allowed an auxiliary request filed during the oral proceedings. This is one of a small series of cases in which the Boards of Appeal (T 2920/18 and T 2295/19) have allowed a very late amendment to the application.
In principle, subsequent to the issuance of the summons to the oral proceedings, i.e. at the last stage of convergence, any amendments, in particular of (auxiliary) requests, are only allowed if good reasons are given for the existence of exceptional circumstances (Article 13(2) of the Rules of Procedure of the Boards of Appeal 2020).
Exceptional circumstances can obviously be found if deletion of dependent claims serves to remove grounds for opposition (R. 80 EPC), and if the amendments were considered to be straightforward, make the (auxiliary) request prima facie admissible and do not raise new issues. Furthermore, all other auxiliary requests were dropped.
Accordingly, by this “last minute manoeuvre”, there was only this one late filed, auxiliary request. In this way, the patent proprietor puts all his eggs in one basket.
This can be worthwhile if it becomes clear – based on the preliminary view of the Board of Appeal or at the latest during the oral proceedings – that a full revocation is to be expected. With such a one-off, final auxiliary request, the patentee still has a chance to save at least a grantable core of the patent.