4.2.1 First level of the convergent approach: amendments to a party's case within the meaning of Article 12(4) RPBA 2020
(i) Requests
In J 3/20 the appellant (applicant) presented submissions concerning R. 139 EPC (designation allegedly mistakenly withdrawn in the parent case before filing the divisional application at issue in the proceedings in hand) for the first time in its statement of grounds of appeal. The Legal Board observed that, during the first-instance proceedings, the applicant had not given the slightest hint that the representative had withdrawn the designation concerned in the parent application contrary to its true intention nor had it requested a correction of the withdrawal, even though it had already been aware of the relevant facts at that time and thus could and should have presented them. The appellant had thus presented a completely fresh case for the first time in the appeal proceedings.
In T 1421/20 the auxiliary requests at issue (0a, 0b and 0c), which were filed with the statement of grounds of appeal, had not been part of the proceedings before the examining division. The board considered them to be amendments to the appellant's (applicant's) case, the admission of which was at its discretion (Art. 12(2) and (4) RPBA 2020).
(ii) Objections and evidence
In T 28/20 an inventive-step objection raised in the statement of grounds of appeal against auxiliary request 1 started from closest prior art (D4) which was different from the closest prior art relied upon (against this request) in the first-instance opposition proceedings (D9). The board held that this new objection constituted an amendment of the appellant's case within the meaning of Art. 12(4) RPBA 2020, since it was not directed to an objection on which the decision under appeal was based (Art. 12(2) RPBA 2020). As the appellant had not explained why the new objection had first been raised on appeal, the board made use of its discretion not to admit it under Art. 12(4) RPBA 2020.
For a further example where the objections put forward in the statement of grounds of appeal did not meet the requirements of Art. 12(2) RPBA 2020 and were, in exercise of the board's discretion (Art. 12(4) RPBA 2020 and Art. 12(6) RPBA 2020, second sentence, RPBA 2020), not admitted, see T 81/20.
- 2023 compilation “Abstracts of decisions”