Key points
- The applicant filed amended claims under Rule 71(6) EPC. The ED did not admit these requests under Rule 137(3) EPC.
- The Board: “It follows from points H-II, 2.4 and H-II, 2.5.1 read in conjunction, correctly in the Board's view, that what matters for the exercise of the discretion to admit or not to admit [amended claims under Rule 71(6) EPC], if the text was "extensively revised", is the content of the amendments and the consequential amount of time for examination that the amendments prima facie require. It is this amount of time that determines whether the amendments are extensive. The Board is of the view that, for instance, where a request is prima facie allowable, the amount of time needed will generally be quite limited so that the amendments will not appreciably delay the preparations for grant of the patent. Admittance of the request into the proceedings under Rule 137(3) EPC may then be justified. On the other hand, if an Examining Division comes to the conclusion that a request is not prima facie allowable but introduces new deficiencies, it is justified for the division to refuse the request under Rule 137(3) EPC (cf. T 1399/10, point 1.3, of this Board in a different composition).”
- The ED had not considered the factor of prima facie allowability. The impugned decision is set aside and the case is remitted to the ED to decide on the admissibility of the amended claims.
T 0222/21 -
https://www.epo.org/law-practice/case-law-appeals/recent/t210222eu1.html
Reasons for the Decision
1. In the decision under appeal the Examining Division stated that it decided not to admit the Main Request dated 11 October 2018 under Rule 137(3) EPC. It exercised its discretion under Rule 137(3) as it did not consent to the amendments filed by the applicant in accordance with Rules 71(3) and 71(6) EPC.
2. The Board notes that, in response to a communication pursuant to Rules 70(2) and 70a(2) EPC dated 24 April 2014, with a letter dated 4 November 2014, the applicant filed amendments and requested further examination on the basis thereof. This was in line with Rule 137(2) EPC. Subsequently, in a response of 10 April 2018 to a telephone consultation with the examiner of 2 October 2017, the applicant requested further examination on the basis of another amended set of claims.
source http://justpatentlaw.blogspot.com/2021/09/t-022221-rule-716-and-rule-1373.html
