Decision T 937/09 dated 20 July, 2012 will not be published in the Official Journal of EPO, but is fairly relevant for patent practitioners. Given that the decision is in German language and might not be easily understood by all our customers, we consider it worthwhile reporting its fundamental findings here.
In the cited decision, the Board held that in examination proceedings before the EPO, the competent examining division has no discretion to reject new requests which objectively intend to overcome an objection which has not, but could and should have been raised earlier. This is because the principle discretion not to allow further amendment of the application (after a first amendment) must take all relevant factors into account (T 937/09, at no. 3.4.1 of the Reasons, citing decision G 7/93). In the case underlying the reported decision, the examining division rejected a new request filed to meet a newly raised objection, whereby the division failed to duly exercise its discretion to either allow or disallow amendments. This was seen as a substantial violation of the rules of procedure, and the appeal fee was consequently refunded.
However, what seems to be a less applicant-friendly ruling in the cited decision is that new requests, which are filed in preparation of oral proceedings, must not automatically be admitted to the proceedings. In other words, amended claims handed in before the due date for filing submissions in preparation of such oral proceedings can still be rejected by the examination division as late filed - provided the division correctly exerts its discretion to deny consent to further amendments.