4.12.11 Number of auxiliary requests

In T 516/06 the board stated that there is no right to file an endless succession of new requests in substitution for requests found inadmissible or unallowable by the board. Proceedings must come to an end some time. If the contrary was true, oral proceedings could easily be misused, in particular in ex parte proceedings, to test the board's opinion as to what subject matter might be patentable and to tailor claims accordingly. In such cases, while not "holding the pen", the board would nonetheless be the ghost-writer of what was ultimately claimed.

In T 309/09, the board had doubts as to whether the number of auxiliary requests could generally be considered a factor on the basis of which their admission under R. 137(3) EPC could properly be denied outright. Whilst it did not wish to rule out that a large number of auxiliary requests might be a sufficient reason in specific cases, it decided that the question could be left unanswered in the case before it, as in any event six auxiliary requests could not automatically be considered excessive.

In T 280/11 the board found that the patent proprietor, which in written proceedings had filed a very high number of requests and had submitted a further four auxiliary requests during the oral proceedings, had to expect a significant portion of the time available on the day of the proceedings to be taken up solely with the administrative handling of all the 686 requests. After the board had discussed and rejected these requests at the oral proceedings, or (in the case of new auxiliary requests 682 to 685) after lengthy debate had refused to admit them into the proceedings, the proprietor could not reasonably expect to be granted a further break late in the afternoon of the same day to allow further requests to be drafted and submitted.