I. Rule 57a EPC does not prohibit an amendment to a granted
patent containing a single independent claim whereby a plurality
of independent claims are introduced if the amendment is a
necessary and appropriate response to a ground of opposition.
(Reasons 4.8)
II.1 Rule 29(2) EPC does not apply in opposition proceedings to
prohibit an amendment to a granted patent if it would be
unreasonable to demand of the amended claims that they comply
with this rule. This condition is satisfied in a case where
otherwise Rule 29(2) EPC would force the proprietor to abandon
potentially valid subject matter already contained in the granted
claims. (Reasons 5.16)
II.2 No circumstances are envisaged in which Rule 29(2) EPC would
be of any application in opposition proceedings. Once an
amendment to the claims has been established to be necessary and
appropriate having regard to grounds of opposition, it would be
unreasonable to impose the additional requirement that the
amendment complies with the purely administrative provisions of
Rule 29(2) EPC. (Reasons 5.19)
III.1 Article 10a(2) of the Rules of Procedure of the Boards of
Appeal requires that a party wishing to argue that a decision
under appeal should be upheld for a reason additional to the
reason(s) already relied on by the opposition division, must, in
its reply to the appeal, set out its complete case in respect of
this additional reason, together with all facts, arguments and
evidence relied upon. Otherwise such additional reason will only
be admitted and considered at the Board's discretion by way of an
amendment to the party's case. (Reasons 7.10)
III.2 A Board of Appeal has an ex officio duty under Article
114(1) EPC to examine amended claims, but only for prima facie
non-compliance with the EPC. (Reasons 7.15)
III.3 A Board of Appeal's power under Article 111(1) EPC, ex
officio, to remit the case to the opposition division for further
prosecution should only be exercised in a case such as the
present one if, as a minimum, there are materials before it in
the appeal proceedings which indicate that one or more of the
claims under attack in the appeal proceedings is prima facie
highly unlikely to be valid. (Reasons 7.16)
IV. The minutes of oral proceedings before the Boards of Appeal
should record the requests of the parties on which a decision of
the Board is required, such as the allowability or otherwise of
the appeal, the form in which the proprietor seeks maintenance of
the patent, requests for remittal of the case or relating to
appeal fees or costs. The minutes should also record specific
statements which have an impact on the definition of the
subject-matter, such as statements of surrender or abandonment of
subject-matter, where these are relevant to the decision to be
taken. The arguments of the parties should not be recorded in the
minutes, nor should statements or admissions made in oral
proceedings which a party considers will be of use to it in any
subsequent proceedings in national courts but which have no
bearing on the decision which the Board is required to make, such
statements or admissions neither constituting "essentials of the
proceedings" nor "relevant statements" within the meaning of Rule
76(1) EPC. (Reasons 8.5 - 8.8)
