Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T0532/20 vom 08.02.2023

See also abstract under Article 123(2) EPC. In T 532/20 the board decided not to take into account auxiliary request A, filed during the oral proceedings before the board, pursuant to Art. 13(2) RPBA 2020. In the board's view, auxiliary request A, the sole claim of which was a combination of granted claims 1, 4 and 8, represented an amendment to the respondent's appeal case. The respondent had argued in essence that according to decision G 2/98, dependent claims were to be seen as individual claims containing back references as short-form notation. Auxiliary request A therefore corresponded merely to the cancellation of all claims save one granted dependent claim. The board (besides noting that decision G 2/98 did not appear to support this contention, but potentially G 3/14) pointed to the fact that only in part of the case law the boards had considered the deletion of a claim category, of dependent claims or of alternatives within claims not to be an amendment within the meaning of Art. 13 RPBA 2020 in the respective circumstances (T 1480/16, T 2638/16, T 884/18, T 914/18, T 995/18, T 1151/18 and T 1857/19), whereas in other decisions the boards had considered such deletions to constitute an amendment of the appeal case (T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 1569/17, T 853/17, T 306/18 and T 482/19). The board, analysing the first line of case law, came to the following conclusions. First, whether the deleted claims (or alternatives) were granted claims did not play any role in reaching the conclusion that certain deletions did not represent an amendment to the appeal case. Second, none of these decisions contained the unreserved statement that certain claim deletions were per se not to be considered an amendment. What was clearly essential in this line of case law was that the deletions did not shift the subject of the proceedings or did not lead to new issues to be examined, but that they represented mere restrictions of the subject of the proceedings. Third, none of the above decisions dealt with the deletion of an independent claim and simultaneous maintenance of a dependent claim. The board expressed that it had reservations against the first line of case law and rather agreed with the analysis in J 14/19 and T 2091/18, according to which any change from the appeal case as defined in Art. 12(2) RPBA 2020 was an amendment. In the board's view it was dogmatically more consistent to acknowledge that deletions of claims represented an amendment, but that, if this amendment merely had the effect to limit the issues to be examined, this should be a strong criterion in favour of admittance, or represent special circumstances within the meaning of Art. 13(2) RPBA 2020. The board held that in the case in hand auxiliary request A clearly introduced new issues to be examined into the proceedings, as in the normal course of events the discussion of a claim request could be limited to its independent claim, since they were (normally) the broadest claim. Auxiliary request A was now directed to the subject-matter of the combination of claims 1, 4 and 8 as granted, including features that had never been discussed before in the appeal proceedings. Moreover, the board was not convinced by the respondent's argument according to which they had been taken by surprise by the board's decision that claim 1 of auxiliary requests 6 to 9 lacked clarity. This objection had been raised by appellant 2 in their letter dated 25.02.2022. The fact that this objection had not been specifically mentioned in the board's preliminary opinion did not justify any surprise on the part of the respondent. From the absence of a discussion of that particular clarity objection, the respondent could not infer that the board did not agree with it. The board further observed that none of the requests on file when the board issued its preliminary opinion were allowable because they all contained added-subject-matter. The board did not have to discuss all further objections, if there was one that appeared to be sufficient to decide on all requests.