The limitation of claims may represent attempts to respond to objections by the EPO or an opponent without necessarily involving any immediate intentions of substantive abandonment. In this case the question arises of whether the applicant or patent proprietor can reinstate broader claims which had been proposed at an earlier stage of the proceedings.
Previously, the boards consistently ruled that a proprietor who has defended his patent to only a limited extent in opposition proceedings is not prohibited a priori (i.e. except in specific cases where the reformatio in peius prohibition applies or there has been abuse of procedure) from returning to a broader version of his patent, including the granted version, in subsequent appeal proceedings. Intervening limitations of the patent do not imply any express abandonment of parts of it but are to be regarded merely as attempts to word the patent so as to delimit it against objections (see inter alia T 123/85, OJ 1989, 336; T 296/87, OJ 1990, 195; T 331/89, T 900/94, T 699/00, T 880/01, T 794/02, T 934/02, T 1018/02, T 386/04, T 1276/05). In T 331/89, the board found the reactivation of earlier claims to be an abuse of procedure because the request had not been filed until the oral proceedings and, in view of its content, was not immediately allowable.
This case law must, however, be interpreted in the light of Art. 12(4) RPBA.
Since adoption of R. 116(2) EPC and Art. 12(4) and 13 RPBA, the relevant legislation differs from that applicable at the time of the decision in T 123/85. Whether sets of claims presented on appeal are to be considered is therefore not be determined in accordance with the case law established in that decision, but rather in accordance with the procedural rules now applicable to appeal procedures and the specific circumstances of the case. Accordingly, the admission of auxiliary requests is subject to Art. 12(4) RPBA, which provides that the boards may at their discretion disregard sets of claims which were found to be late filed and not admitted at first instance or which ought already to have been presented at first instance. This discretion also applies to sets of claims presented for the first time on appeal as a means of defending a broader version of the patent than that at issue in the opposition proceedings (T 28/10).
Referring to T 28/10, the board stated in T 671/08 that there was no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Art. 12(4) RPBA and decide whether to admit or not such a request.
In T 1282/05, on being summoned to oral proceedings the appellants had filed new requests, the claims in the amended requests relating to matter not previously claimed or discussed in the appeal proceedings. The independent claims in these requests were worded far more broadly than the matter previously claimed in the appeal proceedings and essentially constituted a return to the original claim 1. The board found that the amendments could not be regarded as a response to objections in the summons, nor had the appellants given any reasons for them. Moreover, the statement of grounds gave no indication that such a return towards the originally claimed matter was intended. Hence the appellants' actions constituted an infringement of Art. 12(2) RPBA. Furthermore, comparable requests could have been submitted before the department of first instance (T 1420/06).
In T 796/02, the board held that it amounted to an abuse of procedure to withdraw a request with broader claims in appeal proceedings in order to prevent the board from taking a negative decision on it, but then re-introduce those broader claims before the opposition division, after a remittal of the case for further prosecution on the basis of much more limited claims was obtained. As the case in issue showed, the overall length of further opposition and possibly further appeal proceedings after remittal was likely to severely impair the legitimate interests of the other party or parties and of the general public in having some degree of legal certainty about the existence and scope of the European patent within a reasonable time span. The re-introduction of both the main and the first auxiliary requests therefore amounted to an abuse of procedure, so that they could not be considered by the board.