4.11.1 General principles

According to Art. 12(2) RPBA 2007, the statement of grounds of appeal shall contain a party's complete case. Art. 12(4) RPBA 2007 requires the board to take into account everything presented by the parties under Art. 12(1) RPBA 2007 if and to the extent that it relates to the case under appeal and meets the requirements in Art. 12(2) RPBA 2007. However, according to Art. 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence and requests which could have been presented or were not admitted in the first instance proceedings.

In several decisions, the boards have cited the principles developed by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ 1993, 408, 420) for the inter partes appeal procedure provided for in the EPC. Art. 12(4) RPBA 2007 is consistent with the principles developed by the Enlarged Board in relation to the application of Art. 113 and 114 EPC in opposition-appeal procedures (T 2102/08). The boards of appeal thus retain, as a review instance, discretion to refuse new material, including requests (claim sets) not submitted during opposition proceedings (T 240/04, T 1705/07, T 23/10, T 1525/10). This ensures the fair and reliable conduct of the judicial appeal proceedings (T 23/10, T 1165/10, T 301/11). This has also been confirmed by the Enlarged Board of Appeal (R 10/09, R 11/11).

Given that the aim of opposition-appeal proceedings is to obtain judicial review of the administrative opposition decision, it follows that the board must as a rule take their decision on the basis of the issues in dispute before the opposition division. It can be directly inferred from the above that the parties have only limited scope to amend the subject of the dispute in second-instance proceedings, and this principle is reflected in Art. 12(4) RPBA 2007. The appeal proceedings are not about bringing an entirely fresh case (T 1705/07, T 356/08, T 1067/08, T 2102/08, T 144/09, T 881/09, T 936/09, T 23/10, T 935/12). In T 2135/13 the board understood the expression "fresh case" as referring to a substantial change in the subject of the proceedings.

Art. 12(4) RPBA 2007 enables the boards to penalise an infringement of the duty to facilitate the first‑instance proceedings, i.e. a failure to display due co‑operation through the submission of facts, evidence and requests in the manner required up to a certain point in the proceedings, and so serves to ensure compliance with the requirement of a fair procedure and to expedite processing of the case. Moreover, it does not entail any arbitrary different treatment of similar cases of belated submissions which is incompatible with the procedural scheme. The duty to facilitate proceedings applies equally to opponents (with respect to the submission of their objections) and patentees (with respect to their means of defence) (T 2102/08, T 28/10).

Art. 12(4) RPBA 2007 instructs us that consideration is unlikely to be given to new submissions that should have been presented in the first-instance proceedings (T 339/06, T 416/07).

In T 301/11 the board observed that requiring all parties to complete their relevant submissions during opposition proceedings meant that the moment in time when their case had to be complete was not determined by the procedural strategy chosen by them. According to Art. 12(4) RPBA 2007, admission of auxiliary requests into proceedings hinged on the question whether a party to appeal proceedings was in a position to make its submission earlier, and whether it could have been expected to do so under the circumstances (see also T 23/10, T 969/14).

In T 1067/08 the appellant filed a main request which was identical to the sole request not admitted in opposition proceedings. The board stated that appeal proceedings were not just an alternative way of dealing with and deciding upon an opposition and that parties to first-instance proceedings were not at liberty to bring about the shifting of their case to the second instance as they pleased, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. The board decided not to admit the main request into the appeal proceedings and stated that the exercise of the powers under Art. 12(4) RPBA 2007 might also be justified where a party's conduct – e.g. maintaining a single request which the opposition division had declined to admit into the proceedings as an abuse of procedure, and refusing to file amended and/or auxiliary requests – had in effect prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board of appeal either to give a first ruling on those issues or to remit the case to the department of first instance (see also T 936/09, T 495/10, T 2017/14).

In T 1873/11 the board rejected the appellant's contention that the use of "power" in Art. 12(4) RPBA 2007 (as opposed to "discretion" in Art. 13(1) RPBA 2007) prevented it from taking a decision at its discretion. Rather, "power" implied the very ability to decide not to admit requests, etc. in certain circumstances specified in the RPBA 2007, even if any such refusal to admit them naturally had to be supported by reasons.

Since, in fact, almost every claim request could have been presented before the department of first instance, the question within that context is whether the situation was such that the filing of this request should already have taken place at that stage (T 273/11, see also T 1162/11). Also in T 1848/12 the board applied the more lenient "should have been presented" with regard to the admission of documents.

In T 419/12 the board observed that refusing under Art. 12(4) RPBA 2007 to admit a request first submitted in appeal proceedings entailed indicating a specific reason why that particular request not only could but should have been submitted at first instance (see also T 569/14).

In both R 11/11 and R 13/11 the respective petitioners complained that the board of appeal decided in its discretion under Art. 12(4) RPBA 2007 not to admit the petitioner's auxiliary requests. The Enlarged Board held that its case-law clearly showed that petition proceedings may not be used to review the exercise by a board of appeal of a discretionary power if that would involve an impermissible consideration of substantive issues. This has also been confirmed in the specific context of the discretion in Art. 12(4) RPBA 2007.

In R 4/13 the Enlarged Board stated that in cases where the discretion not to admit requests is exercised by a board in reliance on Art. 12(4) RPBA 2007 it is inevitably a matter of speculation whether and in what circumstances the party would have filed such requests. Such speculation is however irrelevant as regards the existence and exercise of the discretion and the board quite correctly did not enter into such speculation. In reality it was not therefore in dispute that the board had jurisdiction not to admit the requests.