b) Vorbringen in erster Instanz nicht automatisch Teil des Beschwerdevorbringens 

In T 1296/23 the board pointed out that requests filed during the first-instance proceedings on which the department of first instance had taken no decision were not automatically part of the appeal proceedings. The board had an obligation to review the decision under appeal (Art. 12(2) RPBA; see also T 1309/16 and T 1943/16). This obligation, however, did not extend to auxiliary requests, which were not amongst the requests on which the decision under appeal was based (Art. 12(2) RPBA). That some of these requests might have been "admissibly raised" within the meaning of Art. 12(4) RPBA was immaterial in this regard, unless they had also been expressly maintained on appeal.

In the case in hand, the decision under review was the interlocutory decision of the opposition division to maintain the patent on the basis of auxiliary request 2. Auxiliary requests 3 to 9 filed before the opposition division were only mentioned in the facts and submissions of the decision under appeal. The respondent (proprietor) made no specific requests. Since it countered the appellant's arguments why auxiliary request 2 did not comply with the EPC, the board understood the respondent's (sole) request to be that the appeal be dismissed. This was also noted in the communication under Art. 15(1) RPBA. The board's assessment of the respondent's request(s) remained uncontested until the oral proceedings. In the board's view, the absence of such an objection could be considered as a silent acknowledgment that, when filing its response to the appeal (and in fact at any time before the oral proceedings took place), the respondent only requested maintenance of the patent on the basis of auxiliary request 2. As noted by the board, auxiliary requests 3 to 9 were at the very least not expressly part of the reply to the statement of grounds of appeal and therefore not amongst the requests defining the respondent's case according to Art. 12(3) RPBA.

Only at the oral proceedings did the respondent submit that they had considered auxiliary requests 3 to 9 to be part of the appeal proceedings given that they were mentioned in the decision under appeal and in the appellant's rejoinder. The board did not agree. It pointed out that it was apparent from the summary of facts and submissions and the absence of reasons given in the decision under appeal in respect of those requests that they did not form part of the basis for that decision within the meaning of Art. 12(1)(a) and 12(2) RPBA. The board also noted that nothing in the appellant's rejoinder indicated that the appellant would have understood that said requests were also part of the appeal proceedings.

The board concluded that auxiliary requests 3 to 9 were made for the first time in the oral proceedings before the board. They therefore constituted an amendment under Art. 13(2) RPBA. The board did not consider the explanation given by the respondent for filing these requests only at the oral proceedings to identify exceptional circumstances. It further explained that the re-introduction of said requests and any reasons relating to such requests at such a late stage of the appeal proceedings would contravene the principle of procedural economy, if only because their admittance would have required either a postponement of the oral proceedings or a remittal to the department of first instance. The board decided, therefore, not to take into account auxiliary requests 3 to 9 in the appeal proceedings.