Under Art. 12(4) RPBA 2007, a board of appeal has discretion to refuse to admit requests which could have been presented or were not admitted in the first- instance proceedings. In the boards' view, this applies all the more to requests that were filed and subsequently withdrawn during the first-instance proceedings, since such a course of events clearly shows that these requests could have been presented in those proceedings. The purpose of an appeal is to review what was decided at first instance and, as a logical consequence, not what was not decided (T 528/93, T 1186/06, T 390/07, T 1587/07, T 361/08, T 340/10, T 1525/10, T 140/12, T 1689/12). See also the decisions reported in chapter V.A.5.12.14 "Reverting to broader claims, especially those as granted". Withdrawing a request must be distinguished from abandoning it. A request which has been withdrawn can, in principle, if admitted by the department or board hearing the case, be reintroduced to the proceedings, whereas a request which has been abandoned cannot be resubmitted at a later stage (T 926/12).
According to T 1695/14, requests could be withdrawn either explicitly or implicitly, the latter being when the circumstances left no doubt that a party no longer wished to pursue them (see T 388/12, T 52/15). Procedural law provided for current and withdrawn requests, but not for ones on hold.
A criterion often applied by boards when exercising their discretion in this context was whether the withdrawal of the request had prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance (e.g. T 495/10, T 679/09, T 1855/16).
(i) Request not admitted by the board
In T 679/09 while the appellant may not have intended to avoid a decision of the opposition division on the admissibility of inter alia auxiliary request III, this was the inevitable result of its withdrawal (T 495/10, see also T 933/04, T 1067/08, T 935/12, T 1697/12).
In T 1525/10 the board stated that it is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith. A proprietor who files auxiliary requests by which it delimits the framework of the opposition proceedings and then deliberately withdraws them in order to avoid any adverse decision being reached infringes this general principle by seeking to introduce these requests into appeal proceedings.
In T 390/07 the claim request which had been replaced by another request in the proceedings before the opposition division because it was manifest that it would fail, thereby avoiding a formal decision, but which had then been filed again on appeal, was considered inadmissible by the board.
In T 691/09, the board deemed the belated introduction of a request which had been withdrawn during the oral proceedings before the opposition division to be an abuse of procedure.
In T 52/15 the main request and auxiliary requests 1 and 2 were filed with the statement setting out the grounds of appeal and corresponded to the proprietor's initial request and two auxiliary requests filed during the oral proceedings before the opposition division. These requests differed substantially from the request which was decided upon in the appealed decision. The board stated that the reintroduction of previously withdrawn requests on appeal ran counter to the main purpose of inter partes appeal proceedings, namely to give the losing party the possibility of challenging the decision of the opposition division on its merits. The board also noted that although there have been decisions where the boards have allowed patent proprietors to reinstate broader requests which had been withdrawn or not maintained during the opposition proceedings, numerous decisions have also been issued in which the board's discretion has been applied in a strict manner and such requests have not been admitted into the appeal proceedings (see T 390/07, T 361/08, T 671/08, T 922/08, T 1525/10, T 140/12, T 1697/12, T 143/14). The board held that this appeared to be the current predominant approach applied by the boards. The requests were not admitted into the appeal proceedings (Art. 12(4) RPBA 2007).
(ii) Request admitted by the board
In T 2599/11, with respect to Art. 12(4) RPBA 2007, the board had to consider whether the non-filing of the sole request submitted in the appeal proceedings or the withdrawal of the similar request A in the opposition proceedings prevented the opposition division from giving a reasoned decision on the critical issues. In the case at issue, the board concluded that the critical issues in the opposition and the appeal proceedings were identical in so far as the question had to be answered whether the claimed subject-matter involved an inventive step. Hence, the sole request of the appellant did not bring an entirely fresh case and was admitted into the proceedings (see also T 467/13).
In T 937/11 the main request was identical to auxiliary request 1 which was withdrawn before the opposition division. The board stated that the circumstances of the present case had to be distinguished from the situation underlying T 1525/10 and T 390/07 (see above). Because the opposition division's reasons for rejecting the main request evidently applied likewise to the claims of auxiliary request 1, the appellant did not avoid a decision on the ground for opposition when it withdrew auxiliary request 1. Moreover, the appellant neither surprised nor disadvantaged the opposing parties on appeal when it turned the withdrawn auxiliary request 1 into its main request before the board.
In T 883/12 the proprietor argued convincingly why it had not been unreasonable to withdraw a number of the auxiliary requests before the opposition division without a decision having been taken on them, namely because the opposition division had deemed, with respect to a higher ranking request, that a particular feature was required in order to allow an inventive step to be recognised; the claims of the withdrawn auxiliary requests did not include this feature. The board stated that the current request was not one which could reasonably have been filed in the first instance proceedings.
In T 350/17 the board admitted a request substantially identical to an auxiliary request, which had been withdrawn and substituted at the oral proceedings before the opposition division. The board distinguished its case from T 140/12 on the basis that this earlier auxiliary request had been substituted under exceptional circumstances which justified its resubmission. First, the withdrawal had not precluded any discussion on patentability, because the division had already announced its conclusions. Second, the division's warning that only one further auxiliary request would be admitted had arguably put pressure on the patentee to focus on requests which would overcome the outstanding objections.
In T 1855/16 the board held that the resubmitted auxiliary requests did not amount to an entirely fresh case. The two critical issues had been discussed at the oral proceedings and decided on by the opposition division, albeit in the context of different auxiliary requests.