G 0007/93 - Review of first-instance discretionary decisions ("Late amendments") - #18

Citation rank: 18
No. of citations: 173

G 7/93 is primarily concerned with two provisions of the EPC1973, both of which no longer exist under the EPC2000. G 7/93 looked at the question whether late amendments may be allowed by an examining division after formal approval of the text proposed for grant under an old version of Rule 51(4) and (6) EPC1973. A second part of G 7/93 deals with "Reservations" of contracting states under Art. 167 EPC1973, which also no longer exist.

Given that G 7/93 deals with provisions that no longer exist under the EPC2000, it is surprising to see a steep increase in citations of G 7/93 after the EPC2000 came into force (see graph at top right).

It turns out that G 7/93 is nowadays no longer cited for its comments on Rule 51 and Art. 167 EPC1973. Instead, the decision is cited for its general comments on how the EPO's first instance departments are to exercise their "discretion"- if they have it - and to what extent an Appeal Board can review the discretionary decisions of the first instance.

In this context, the Enlarged Board in G 7/93 stated:

"It may be added that if an Examining Division has exercised its discretion [to allow or not to allow further amendments after formal approval was given by applicant to the text proposed for grant] under Rule 86(3) EPC against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion." (point 2.6 of the reasons)

Following this statement by the Enlarged Board of Appeal, the Appeal Boards nowadays only review discretionary decisions of first-instance departments to the extent that it is assessed whether the deciding body exercised its discretion "in accordance with the right principles, or in an unreasonable way". A Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way (see, e.g., T 2355/09, citing G 7/93).

Most discretionary decisions of the first-instance departments reviewed by the Boards in this manner are decisions on whether or not to allow late-filed requests, documents and/or new grounds in opposition proceedings. Such discretionary decisions are reviewed by Boards of Appeal only to the limited extent described above.

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Headnote:

1. An approval of a notified text submitted by an applicant pursuant to Rule 51(4) EPC does not become binding once a communication in accordance with Rule 51(6) EPC has been issued. Following issue of such a communication under Rule 51(6) EPC and until issue of a decision to grant the patent, the Examining Division has a discretion under Rule 86(3), second sentence, EPC, whether or not to allow amendment of the application.
2. When exercising such discretion following issue of a communication under Rule 51(6) EPC, an Examining Division must consider all relevant factors. In particular it must consider and balance the applicant's interest in obtaining a patent which is legally valid in all of the designated States, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent. Having regard to the object underlying the issue of a communication under Rule 51(6) EPC, which is to conclude the granting procedure on the basis of the previously approved text, the allowance of a request for amendment at that late stage in the granting procedure will be an exception rather than the rule.
3.Reservations under Article 167(2) EPC do not constitute requirements of the EPC which have to be met according to Article 96(2) EPC.

The full text of the decision can be found here.

Quotes from decisions citing G 7/93 can be found here.