T 0063/86 (Consent for amendments) of 10.8.1987 - #90

Rank: 90
No. of citations: 58

T 63/86 deals with the appeal procedure. It is concerned with the question to what extent are amendments to the claims allowed together with the Notice or Grounds of Appeal.

In the case at hand notice of appeal was filed together with a new set of Claims 1 to 16, which were described as "replacing all claims on file". The new claim 1 did not appear to correspond to any particular combination of the claims previously filed.

The Board noted that the applicant/appellant did no longer wish to pursue the claims that led to the refusal . Regarding the question whether or not to admit such amendments at the appeal stage, the Board stated:

"[A]mendment of the claims of an application at the [...] stage of examination is a matter of discretion governed by the final sentence of Rule 86(3) EPC [now: R. 137(3) EPC], which states "No further amendment may be made without the consent of the Examining Division", that is, no further amendment without such consent after the opportunity to amend in reply to the first communication of the Examining Division has passed. Thus, the fact that an appeal has been filed does not give the patent proprietor any right to amend his application as part of the appeal proceedings."

The Board thus found that a Board is not obliged to admit further amendments. They noted that Art.111(1)  EPC1973 allowed them to "exercise any power within the competence of the department which was responsible for the decision appealed". They did not, however, go so far to not admit the claims and to thereby end the procedure. Instead they stated:

"In cases of minor amendments filed during the appeal, it may be appropriate for a Board of Appeal to exercise the discretion of the Examining Division under Rule 86(3) EPC [now: R. 137(3) EPC]. However, in a case such as the present, where substantial amendments have been proposed which require a substantial further examination in relation to both the formal and substantive requirements of the EPC, such further examination should be carried out, if at all, by the Examining Division as the first instance, only after the Examining Division has itself exercised its discretion under Rule 86(3) EPC. In this way, the applicant's right to appeal to a second instance is maintained, both in relation to the exercise of discretion under Rule 86(3) EPC, and (if such discretion is favourably exercised) in relation to the formal and substantive allowability of the amended claims." (point 2 of the reasons) 

Finally, the Board concluded that the case is to be remitted to the first instance to decide (i) whether the further amendments to the claims can be made under Rule 86(3) EPC1973 [R. 137(3) EPC]; and (ii) if such amendments can be made, whether such claims are allowable.


T 63/86 represents a rather liberal policy of the Boards towards late amendments to the claims. It seems as if an increased workload/pressure on the Boards has changed their policy towards late-filed amendments. Nowadays, late-filed claims are often simply not admitted. This may be a reason why T 63/86 has not been used or cited by other Boards from 2014 onwards.

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Headnote 1 and 2:

1. The amendment of claims during an appeal from a decision to refuse a European patent application is a matter of discretion under Rule 86(3) EPC, final sentence.
2. In a case where substantial amendments to the claims are proposed on appeal, which require substantial further examination, the case should be remitted to the Examining Division, so that such examination should be carried out, if at all, by the Examining Division after the latter has exercised its discretion under Rule 86(3) EPC, final sentence.

The full text of the decision can be found here.