Zusammenfassung von Art 12(4) RPBA 2020 für die Entscheidung T0714/20 vom 01.12.2022

In T 714/20 the appellant (applicant) had requested that a patent be granted on the basis of a main request or one of two auxiliary requests, all filed with the grounds of appeal. These requests corresponded respectively to the main request filed in advance of the oral proceedings before the examining division, but later replaced by the main request underlying the decision, to this latter main request, and to the first auxiliary request underlying the decision, all further amended in the same way to remedy the clarity objection noted in the decision in respect of the then main request. This amendment used wording employed by the examining division itself when construing the claim. The board therefore considered this to be an appropriate response to the grounds for refusal and did not see it as an obstacle to admittance under Art. 12(4) RPBA 2020. The first auxiliary request (main request underlying the decision) was therefore admitted. The main request, on the other hand, was based on a request not maintained at first instance. The board, referring to the statement in Art. 12(6) RPBA 2020 that "[t]he Board shall not admit requests ... which were no longer maintained, in the proceedings leading to the decision under appeal", observed that since the non- maintained request had been amended, this provision did not apply as such. However, in the board's view the principle expressed in the cited passage could be considered in the exercise of discretion to admit amendments under Art. 12(4) RPBA 2020. Examining the appellant's arguments, the board pointed out, among other things, that it had been the appellant's choice not to re-file the current main request before the examining division. As a consequence, this request was not part of the decision under appeal and its admittance was therefore within the board's discretion. Moreover, the board rejected the appellant's allegation that the new main request on appeal was merely filed to solve the clarity issue. It noted that the amendment which had been carried out as a response to the mentioned clarity objection was unrelated to the amendment carried out at first instance when the previous main request was replaced with the one underlying the appealed decision. Thus the board did not see any circumstances that would justify the admittance of this request (Art. 12(4) RPBA 2020, in view of Art. 12(6) RPBA 2020). The second auxiliary request was based on the first auxiliary request underlying the decision under appeal, which was not admitted by the examining division pursuant to R. 116(2) EPC and R. 137(3) EPC. The board considered that, again, Art. 12(6) RPBA 2020 did not apply as such, but was of the opinion that the principle expressed in it, according to which "[t]he Board shall not admit requests ... which were not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the use of discretion", may be considered in the exercise of discretion to admit amendments under Art. 12(4) RPBA 2020. The board observed that, in the case in hand, the second auxiliary request differed from the one not admitted by the examining division in a way (amendment for clarity) which was unrelated to the reasons given for non-admittance (late filing and divergence). The board was further of the opinion that the discretionary decision of the examining division not to admit the first auxiliary request underlying the decision was taken in a reasonable manner. It also did not see other circumstances that would justify the admittance in appeal of a new request based on it. Thus the second auxiliary request was not admitted (Art. 12(4) RPBA 2020, in view of Art. 12(6) RPBA 2020). With regard to patentability of the first auxiliary request, the board concluded that, under a technically meaningful claim construction, claim 1 lacked novelty in view of D1 (Art. 54 EPC).