Abstract on Art 13(2) RPBA 2020 for the decision T0218/20 of 15.12.2022

In T 218/20 the respondent (proprietor) initially requested as main request that the appeal be dismissed and alternatively that the patent be maintained on the basis of one of the auxiliary requests 1 to 5, first filed together with the reply to the grounds of appeal. The board accepted that the latter requests had been filed in response to new inventive step objections first raised in the oral proceedings before the opposition division. In the board's view (already outlined in its unchallenged preliminary opinion), there was no need at that moment to file any further auxiliary requests as the opposition division was not convinced by these objections. Thus, the respondent had availed itself of the first opportunity to respond to these attacks. The board further held that the requests seemed to be fair and appropriate reactions and therefore justified in the sense of Art. 12(4) RPBA 2020. Moreover, the board did not consider changing the original order of the requests filed with the reply to the grounds of appeal - especially promoting the original fourth auxiliary request to main request - as an amendment to the respondent's (proprietor's) appeal case. The appellant had argued that this new main request should not be admitted since changing the original order of the requests at the beginning of the oral proceedings before the board represented an amendment falling under Art. 13 RPBA 2020. The appellant had also argued that the new main request was not clearly allowable and that the new order of requests resulted in non- converging requests. The board, however, did not see how merely changing the order of requests that were all filed as early as possible in the appeal, and which the parties and the board had had ample opportunity to consider, should mean that the much stricter provisions of Art. 13 RPBA 2020 had to apply for their admission. In the case in hand the subject of the proceedings and the issues raised had clearly not changed. Indeed, promoting a lower, more limited request to main request could benefit procedural economy: if the newly promoted request was held allowable, issues raised against previously higher requests would become moot. If not, it could (at worst) mean that the same issues would have to be discussed, possibly in a different order. The lack of convergence of the remaining now lower ranking auxiliary requests with the present request could play no role in the admission of the higher- ranking request. The board concluded from the above that the relevant provisions for admission remained those of Art. 12(2) and 12(4) RPBA 2020. Thus, the criteria mentioned in Art. 13 RPBA, such as clear allowability, did not apply. The board decided to admit the main request under Art. 12(2) and (4) RPBA 2020. The board maintained the patent in amended form according to the main request.