Abstract on Art 13(2) RPBA 2020 for the decision T2599/19 of 14.11.2022

In T 2599/19 the board decided that the main and sole request was not taken into account under Art. 13(2) RPBA 2020, as it was unable to see any exceptional circumstances justifying filing the request in response to the board's summons to oral proceedings. Claim 1 of this new main request was an extensively reworded version of claim 1 of the previous main request. The latter had been filed with the statement of grounds of appeal. According to the appellant (applicant), the amendments to claim 1 had been intended to overcome the objections under Art. 123(2), 84 and 56 EPC raised in the board's communication pursuant to Art. 15(1) RPBA 2020. The board, however, pointed out that it had informed the appellant (applicant) in this communication that it was considering not admitting the previous main request under Art. 12(4) RPBA 2007. It confirmed in its decision that this request would indeed not have been admitted, as it could and should have been submitted during first-instance proceedings. Since the beginning of the examination proceedings, novelty and inventive-step objections had been raised by the examining division in view of document D1. The applicant had responded with arguments without attempting to overcome these objections by substantively amending claim 1. An amended set of claims submitted before the oral proceedings responded only to later objections based on D6 and D7. In spite of the discussion during the oral proceedings dealing with the patentability issues, the applicant refrained from submitting amendments, which could have been in the form of auxiliary requests, to overcome these objections. As a result of the applicant's approach, there could be no in-depth exchange of views on novelty and inventive step of the now-claimed subject-matter between the applicant and the examining division, thereby shifting the discussion on patentability to the appeal proceedings without any good reason. The board concluded from the fact that the initial main request would not have been admitted under Art. 12(4) RPBA 2007, that the objections raised against this request in the board's summons were only of a hypothetical nature. In the board's view, in no case could hypothetical objections serve as a valid justification for submitting remedial amendments. In view of this, the appellant's main and sole request was not taken into account, and the appeal dismissed.