5.1. Circumstances leaving no doubt that requests have been withdrawn

In the examination proceedings leading to the decision under review in T 996/12, the appellant filed by letter a redrafted main request. Furthermore, the appellant expressly requested the "grant of a patent on the basis of the redrafted main claim filed with this letter". According to the board, it was reasonable to interpret this letter and request as the clear intention of the appellant to have only this new main request examined by the examining division. Unlike the situation where an applicant submitted one or more auxiliary requests, submitting a new main request automatically led to the replacement and – in legal terms – withdrawal of (any) previous main request(s). This notion was a direct result of the fundamental procedural principle of party disposition (ne ultra petita) that was guaranteed by Art. 113(2) EPC. According to the board, the fact that the examining division held the last amendment of the main request to be inadmissible could not and did not "revive" or "re-establish" the finally withdrawn previous main request(s). See also T 573/12 in which the board took the same approach and added that it was up to the applicant to indicate if it maintained the former request as an auxiliary request.

In T 1411/21 the examining division decided not to admit the main request into the proceedings. As to the appellant's argument that it had never made any statements to the effect that any subject-matter could be considered abandoned, the board noted that non-admittance under R. 137(3) EPC did not automatically revive the previous set of claims that the examining division had agreed to admit, unless an applicant had indicated that they had been relying on them as an auxiliary request (see T 690/09). Referring to T 996/12 and T 573/12, the board confirmed that the filing of a new main request automatically resulted in the replacement and, in legal terms, the withdrawal of any previous main requests.

In T 2301/12 the proprietor had replaced the initial requests with new requests before the opposition division. The board held that the use of the word "replace" implied that the initial main request was no longer the current main request, and since there was no attempt to retain it as a new auxiliary request either, it was difficult to avoid the conclusion that it had been simply withdrawn. The new requests had been annexed to the minutes and the first of them was clearly entitled "main request". The board did not accept the argument that the titles of requests should be considered mere labels for identification. Where a proprietor filed multiple requests, there had to be a single main request, and it had to be apparent at every stage of the proceedings which request this was.

In the same vein, in T 52/15 the board noted that, in the circumstances of the case, the opposition division did not err when considering that each newly filed "main request" was clearly meant to replace the previously filed one/s. The board emphasised that the withdrawal of a request was a serious procedural step which was usually announced explicitly by a party via a corresponding statement and that any such statement must be mentioned in the minutes (see T 361/08). However, an explicit withdrawal was not required if a party's behaviour or procedural steps it took during the proceedings made its intention unequivocal (see T 388/12). The board confirmed that EPO departments have the duty to ensure that any uncertainty with regard to procedural acts of the parties is clarified. However, the board held that, if a procedural act of a party was clear and there were no reasons to suggest that its intentions were not correctly understood, that party could not expect not to have to bear the consequences of that procedural act.

In T 1255/16 the board concluded from the following elements that the previously filed requests had been replaced with the newly filed claims: the appellant's reply to the preliminary opinion, in which the board had raised objections against the previously filed requests, contained no arguments in their support, but merely gave reasons why the newly filed amended claims complied with the EPC; in addition, the appellant did not disagree when the board informed him, in a further communication, of its understanding that the newly filed claims replaced the previous pending substantive requests.

In T 1695/14 too, the board found that the request had been implicitly withdrawn. It also held that requests not later pursued as the main request or as an auxiliary request but instead (implicitly) withdrawn did not remain in the proceedings; the procedural law allowed for pending or withdrawn requests, but not for ones on hold.

In T 1155/17, the patent proprietor had filed a main request and auxiliary requests 1-6 with the reply to the appeal, making no mention of the requests initially filed with the statement of grounds of appeal. The board took the view that it was evident from those circumstances that the latter requests were not to be pursued and that any other interpretation would lead to there being multiple main requests and also multiple auxiliary requests 1 and 2, i.e. multiple requests of equal ranking, in the proceedings.