d) Deletion of claims or alternatives within claims 

The deletion of a claim category, of dependent claims or of alternatives within claims were held not to be amendments to the appeal case within the meaning of Art. 13 RPBA 2020 in the circumstances at issue in T 1480/16, T 2638/16, T 884/18, T 914/18, T 995/18, T 1151/18 and T 1857/19. By contrast, the boards in T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 1569/17, T 853/17, T 306/18 and T 482/19, which likewise concerned deletions of claims or of alternatives embodiments within claims, regarded them as amendments and so exercised their discretion under Art. 13 RPBA 2020 (in most cases, however, ultimately admitting the requests concerned, though not in e.g. T 482/19 and T 2222/15).

A factor frequently considered by the boards when assessing whether a deletion amounted to an amendment was whether it would entail thoroughly re-evaluating the matters at issue, alter the factual and legal scope of the proceedings and require a fresh discussion of novelty or inventive step or whether, instead, it would merely reduce the complexity of the proceedings by eliminating one of the matters in dispute. As summarised by the board in T 914/18, the deletion of an alternative and of dependent claims have been considered to be mere restrictions of the subject-matter that did not constitute an amendment to a party's case within the meaning of Art. 13 RPBA 2020, provided they did not lead to a fresh case.

The board in T 2091/18, however, disagreed with this distinction. In its view, there was no support in the RPBA for considering that a deletion of claims did not amend the appeal case if it did not alter the factual situation (T 995/18, T 981/17, T 1792/19, T 1857/19) or require (thoroughly) re-evaluating the matters at issue (T 995/18, T 981/17). Whether an appeal case had been amended within the meaning of Art. 13(2) RPBA 2020 had to be divorced from considerations as to the impact on how the proceedings would progress.

(i) Deletions held not to be an amendment

In T 1480/16 appellant I (patent proprietor) submitted an auxiliary request 5 at the oral proceedings. This request was based on auxiliary request 3, filed with the reply, with the only difference being the deletion of the method claims. The board did not consider this deletion to be an amendment to the appeal case since it did not result in any change to the factual situation. In particular, it did not necessitate any new discussion on novelty or inventive step. As for the insertion of the term "gleichzeitig" [at the same time] into feature I') of claim 1, contested by appellant II, the board was of the opinion that this resulted in explicitly setting out what the opposition division had considered to be implicitly implemented in feature I) of claim 1 (which it had maintained) and therefore to justify a finding of inventive step. Appellant II had disputed this finding in its appeal. Appellant I had already responded to this by filing auxiliary request 3 as a precautionary measure with its reply to the appeal and adding the term "gleichzeitig" to claim 1. Similarly, it had already addressed appellant II's objections regarding clarity and impermissible intermediate generalisation in its written reply, so there was no amended case in this respect either. However, see also T 2222/15 and T 1569/17, in which the boards distinguished the cases before them from T 1480/16; the board in T 1569/17 observed, in particular, that more thorough and nuanced arguments had been submitted for the two claim categories at issue in T 1480/16.

In T 995/18 auxiliary request 1 filed at the oral proceedings was based on the main request at issue in the contested decision and filed with the reply to the appeal; the only difference was that a dependent claim had been deleted. The board did not consider this deletion to amount to an amendment to the appeal case since it did not result in any change to the factual situation (see T 1480/16) of the kind arising where a deletion entailed thoroughly re-evaluating the matters at issue. Here, abandoning the dependent claim had merely eliminated one point of dispute from the proceedings; it did not put the other claims in a new light or otherwise affect the proprietor's appeal case. As the board explained, such abandoning of a claim was comparable to an opponent's abandoning individual objections or lines of attack, the admissibility of which was rightly not regarded as a matter for the board's discretion either (confirmed in T 914/18). See also T 2638/16, in which the same principles were applied to a deletion of an alternative embodiment that likewise did not entail completely revisiting the matters at issue.

In T 884/18 the new main request (filed after the summons to oral proceedings) was based on the main request of the impugned decision, but wherein dependent claim 8 had been deleted in order to restore the claimed priority. The board underlined that the deletion was of no consequence for the case of either party, which was directed primarily at claim 1 as granted. The board was of the opinion that it followed that this amendment did not represent a modification of the factual and legal framework of the debate to date. The board concluded that it did not represent an amendment to the respondent's (proprietor's) case within the meaning of Art. 13(2) RPBA 2020. See also T 565/16 in which the board stated that the deletion of dependent claims did not constitute an amendment to a party's appeal case in the sense of Art. 13(1) EPC.

In T 1857/19, where all apparatus claims had been deleted from the new main request filed during the oral proceedings, the board noted that the remaining claim category (method claims) had been the principal subject of the discussion. The circumstances of the case were therefore similar to those in T 1480/16 and T 995/18, in which the deletion of the claims had not changed the factual and legal framework and had thus not been considered an amendment to the party's appeal case.

(ii) Deletions held to be an amendment

In T 482/19 the auxiliary requests at issue (filed after summons to oral proceedings) were based on requests filed during first-instance opposition proceedings, except that the product claims had been deleted. The board distinguished the case from T 1480/16 (decided by the same board). In the case in hand, the method claim was more limited than the product claim. The limiting features had not played any role in the appeal proceedings, as the submissions of the parties were mainly related to the product claims that were present in all requests on file. However, if the board were to admit these features, they would need to be considered in particular in relation to the issue of inventive step and this would result in a substantial and unexpected change in the discussion at the oral proceedings. Therefore the filing of the auxiliary requests at issue constituted an amendment of the patentee's case within the meaning of Art. 13 RPBA 2020. Since the appellant did not demonstrate any exceptional circumstances, the board did not admit the request pursuant to Art. 13(2) RPBA 2020.

In T 1569/17 the board held that, according to the case law, filing a set of claims differing from a previously filed request in that claims had been deleted could be regarded as not amending the appeal case within the meaning of Art. 13(2) RPBA 2020 if it did not alter the factual situation or entail revisiting all the matters at issue (T 1480/16, T 995/18). However, it observed that, in the case at issue in T 1480/16, the patentability of the device and method claims had already been examined separately and decided differently at first instance. What was more, the parties to the appeal in that case had submitted distinct arguments for the device and method claims and so made thorough and nuanced cases on the two claim categories. The case in hand here was different. Auxiliary request 9 filed at the end of the oral proceedings was the first request on appeal that did not include a product claim (whereas all method claims had been deleted in the higher-ranking auxiliary request 8).

For further decisions where deletions were considered to be amendments, but the requests were admitted, see e.g. T 1597/16 (limitation to two of three embodiments of a feature, no change in factual or legal issues in dispute, discretion nevertheless exercised, admitted), T 682/16 (deletion of claims 48-53, no objection from opponent, admitted), T 1224/15 (deletion of dependent claim not giving rise to any new objection, reference to T 1480/16, discretion exercised under Art. 13(2) RPBA 2020, request admitted), T 1439/16 (deletion of claim 1 from auxiliary request 6 was considered an amendment but not one that introduced new subject-matter to be discussed, admitted), T 853/17 (only product claims defined in granted patent retained, admitted), T 306/18 (auxiliary request 1" limited to sole method claim of granted patent, admitted), T 713/14 (auxiliary request I: deletions of alternatives from independent claims, admitted; auxiliary request II: restriction of the subject-matter to embodiments of dependent claims, admitted), T 2091/18 (deletion of all device claims, main request admitted); cf. also the decisions, concerning somewhat different circumstances, in T 2787/17 (limitation to specific embodiments, one of which, however, had previously been disclosed only in the description) and T 2222/15 (auxiliary requests 2.2 and 2.3, deletion of the method claims, submission without supporting reasons).