T 0437/20 of 24.07.2024

Grounds for opposition - added subject-matter (yes)
Amendments - added subject-matter (yes)
Amendments - allowable (no)
Amendments - inescapable trap (yes)
Reply to statement of grounds of appeal - party's complete appeal case
Reply to statement of grounds of appeal - reasons set out clearly and concisely (no)
Amendment to case - exercise of discretion
Amendment to case - amendment overcomes objection (no)

1. Where the opponent appeals against the maintenance of the patent in unamended form and auxiliary requests filed before the opposition division are not discussed in the impugned decision, such auxiliary requests need to be substantiated when re-submitted in appeal, even in the absence of previous arguments against such requests in the file.
2. Should the main request fall, the respondent proprietor must normally request that the decision be set aside and argue why the patent should be maintained in an amended form, i.e. why the decision under appeal should be amended within the meaning of Article 12(3) RPBA (Reasons 3.1.3).
3. Given that there are no tangible arguments in the impugned decision why these requests should or should not be held allowable, the board cannot proceed in the usual manner to review the decision under appeal. On the other hand, the board also cannot allow these requests without examining them on their merits. Under these circumstances it is first and foremost the duty of the proprietor to give reasons how the auxiliary requests would overcome the objections against the main request (Reasons 3.1.4).
4. Given that an auxiliary request becomes relevant where a higher ranking request is not allowable, arguments provided for the higher ranking request cannot be sufficient for allowing the lower ranking request. Something additional is required (Reason 3.1.6).