In principle, an amended claim, which would put the opponent and
sole appellant in a worse situation than if it had not appealed,
must be rejected. However, an exception to this principle may be
made in order to meet an objection put forward by the
opponent/appellant or the Board during the appeal proceedings,
in circumstances where the patent as maintained in amended form
would otherwise have to be revoked as a direct consequence of an
inadmissible amendment held allowable by the Opposition Division
in its interlocutory decision.
In such circumstances, in order to overcome the deficiency, the
patent proprietor/respondent may be allowed to file requests, as
follows:
- in the first place, for an amendment introducing one or more
originally disclosed features which limit the scope of the
patent as maintained;
- if such a limitation is not possible, for an amendment
introducing one or more originally disclosed features which
extend the scope of the patent as maintained, but within the
limits of Article 123(3) EPC;
- finally, if such amendments are not possible, for deletion of
the inadmissible amendment, but within the limits of Article
123(3) EPC.
