GL H II 3.2 Amendments not related to the grounds for opposition

If the proprietor proposes amendments to the patent in reply to the grounds for opposition and the opposition division intends to maintain the patent in amended form pursuant to those grounds, other amendments not related to the grounds for opposition (e.g. clarifications), or corrections (H‑VI, 3.1), may be allowed provided that the patent thus amended still fulfils the requirements of the EPC and that the amendments are considered necessary and appropriate.

GL H II 3.1 Amendments in reply to the notice of opposition

Any amendments made in opposition proceedings must be occasioned by the grounds for opposition specified in Art. 100. That is to say, amendments are admissible only if they are required in order to meet a ground for opposition. However, the ground for opposition does not actually have to have been invoked by the opponent. For example, in opposition proceedings admissibly opened on grounds of non-patentability, the patent proprietor can also submit amendments to remove added subject-matter.

GL H II 3 Admissibility in opposition procedure

3.1 Amendments in reply to the notice of opposition

3.2 Amendments not related to the grounds for opposition

3.3 Amendments occasioned by national rights

3.4 Insistence on unallowable amendments

3.5 Late-filed requests in opposition proceedings

GL H II 2.7.1 Concept of "clear allowability"

The examining division will apply the criterion of "clear allowability" in exercising its discretion under Rule 137(3) for treating requests filed after the final date set in accordance with Rule 116(2) without proper justification (T 153/85).

These late-filed claims will only be admitted into the proceedings if they are clearly allowable.

GL H II 2.7 Late-filed requests after summons to oral proceedings in examination

If requests are filed after the final date set in accordance with Rule 116(2), they are usually treated as late-filed, unless a summons to oral proceedings was issued as the first action of the examining division. Another exception is a request filed in response to a change of the subject of the proceedings, e.g. when a further relevant document is cited for the first time during the oral proceedings.

GL H II 2.6 Further requests for amendment after approval

Once the applicant has approved the text communicated to him pursuant to Rule 71(3), by paying the fees and filing the translation of the claims, further requests for amendment will only exceptionally be admitted under the discretionary power of the examining division given by Rule 137(3).

GL H II 2.5.4 Rule 137(4) applies to amendments filed at this stage

Amendments filed in reply to the communication under Rule 71(3) must satisfy the requirements of Rule 137(4) by identifying the amendments and indicating the basis for them in the application as filed (see H‑III, 2.1, and in particular the transitional provisions in H‑III, 2.1.4).

GL H II 2.5.3 Exceptional case where amendments must be admitted

If the application was one of the exceptional cases (i), (ii) or (iii) mentioned in H‑II, 2.2 and no communication under Art. 94(3) has preceded the communication under Rule 71(3), the applicant may amend the description, claims and drawings of their own volition (see C‑III, 2; see also C‑II, 3.1) within the time limit for

GL H II 2.5.2 Further course of proceedings

If the examining division gives its consent under Rule 137(3) to these amendments and/or the correction and considers them allowable without issuing a further communication under Art. 94(3), it issues a second communication under Rule 71(3) based on the amended/corrected text (see C‑V, 4.6), after which it then proceeds to the grant of the patent pursuant to Art. 97(1).[

GL H II 2.5.1 Criteria for admitting such amendments

Decision G 7/93 dealt with the criteria to be applied when examining the admissibility of late-filed amendments in examination. The particular case to which that decision relates arose when the rules were differently formulated, and in a situation where the applicant had already consented to the version proposed by the examining division. However, what was said by the Enlarged Board in that case can be considered generally applicable to new requests put forward at a late stage of the proceedings, i.e.