b) Whether submissions on appeal were directed to requests, facts, objections, arguments or evidence on which the decision under appeal was based 

(i) Submission decided on the merits 

In several decisions, the boards have found that requests and objections on which the examining or opposition division had decided on the merits formed the basis of the contested decision as per Art. 12(2) RPBA (see e.g. T 1186/20 and T 1886/22 for auxiliary requests that were admitted but not deemed allowable, and T 920/20 for objections dealt with in the decision). Similarly, in T 449/21 and T 2337/16 the boards have held that a document to which the opposition division referred for the examination of a substantive issue formed the basis of the contested decision within the meaning of Art. 12(2) RPBA.

In T 920/20 and T 449/21, however, the boards pointed out that only submissions that had been adequately addressed in the grounds of appeal (or the reply to the appeal) were part of the appeal proceedings from the outset in accordance with Art. 12(2) and Art. 12(4) RPBA.

The boards did not always consider that the lack of discretion under Art. 12(2) and (4) RPBA ruled out the possibility of undertaking a limited review of the decision to admit. In T 1670/21, the board reviewed the opposition division's discretionary decision on the basis of the criteria from G 7/93 (point 2.6 of the Reasons, OJ 1994, 775), before finding that the main request on appeal, which corresponded to auxiliary request 5 admitted and allowed by the opposition division, was part of the appeal proceedings. Furthermore, the boards in T 852/17, T 110/18 and T 2603/18, for example, could not discern any legal basis for excluding from the appeal proceedings requests or evidence that had been duly admitted in the first-instance proceedings. However, see also the case law referred to in T 1193/21.

For more detail on "Principles applying to the review of first-instance discretionary decisions", see chapter V.A.3.4.1, and for more detail on the related issue of whether submissions admitted at first instance can be excluded from appeal proceedings, see chapter V.A.3.4.4.

(ii) Submissions admitted but not decided on the merits 

In T 1520/20, for example, the opponent filed documents D45 to D48, which the patent proprietor contended were late-filed. The opposition division admitted these documents (although the content of only two of them was actually used). The board found that these documents formed part of the contested decision. Since there had thus not been any amendment as per Art. 12(2) and (4) RPBA, the board did not have any discretion to disregard them.

However, regardless of whether there was any discretion under Art. 12(2) and (4) RPBA, the boards in some cases undertook a limited review of the decisions to admit at first instance (see e.g. T 2886/19, T 1520/20, T 1522/21 and T 605/22, in which it was examined whether the opposition division had exercised its discretion to admit documents appropriately and in accordance with the right principles; for more on this approach, see point (i) above). In T 1206/19, related to the decision at first instance to admit a citation, the board considered that the possibility of "unadmitting" a request was limited to cases where the decision to admit involved a substantial procedural violation.

(iii) Submissions not admitted 

Cases where a submission not admitted at first instance is then re-filed on appeal are governed by Art. 12(6), first sentence, RPBA. See also chapter V.A.4.3.6.

(iv) Opposition decision based on a higher-ranking request 

In T 1370/21, the board noted that the contested decision related to the rejection of the opposition, meaning that the decision had been based solely on the main request. In the board's view, the auxiliary requests were not a subject of the decision as per Art. 12(2) RPBA. See also decisions T 1800/20 and T 364/20, in which the boards additionally noted that the opposition division had not decided on the admission of the auxiliary request in question.

In T 1135/22, the board noted (referring to T 42/20, T 221/20, T 1800/20 and T 364/20) that dealing with "carry-over requests" in this way was in line with case law that had been settled in the meantime. In its grounds, the board pointed out that the passage from Art. 12(4), first sentence, RPBA reading "[...] unless the party demonstrates that this part was admissibly raised and maintained" would be immaterial if a mere reference to the relevant auxiliary requests in the facts of the contested decision satisfied the requirements of Art. 12(2) RPBA. T 639/20, T 615/22 and T 246/22 are further examples.

(v) Deletion of claims or claim alternatives 

In T 1516/20, the subject-matter claimed in auxiliary request 6, submitted with the grounds of appeal, had been restricted further by comparison with auxiliary request 6 on which the contested decision was based, through the deletion of a variant. The board deemed this to be an amendment but admitted the request, exercising its discretion under Art. 12(4) RPBA (see chapter V.A.4.3.4). Similarly T 1058/20, citing inter alia T 2920/18 and T 494/18. See also T 890/21, in which the question was however eventually left open.

On whether the deletion of claims or claim alternatives always amounts to an amendment to the party's case or whether it does only if the deletion leads to a fresh case, see also chapter V.A.4.2.3d) dealing with this issue in the context of Art. 13 RPBA.

(vi) Reordered requests 

In T 1520/20, with regard to the admissibility of auxiliary request 4 (which corresponded to auxiliary request 1 admitted and allowed by the opposition division), the board held that the request met the requirement of Art. 12(2) RPBA and therefore could not be regarded as an amendment as per Art. 12(4) RPBA. The opponent argued that submitting higher-ranking requests, in this case the new auxiliary requests 1 to 3, which, for their part, were divergent and inadmissible, rendered auxiliary request 4 inadmissible. The board was not convinced, noting that the facts in the cited decision T 2112/16 were considerably different from those in the case at issue, in which the auxiliary request in dispute already formed part of the first-instance decision.

However, see also decision T 309/21 (summarised in chapter V.A.4.2.2c)(vi)), which related to a similar situation but where the request filed at first instance did not form part of the contested decision.

(vii) Objection raised for the first time against another request 

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, since it was not directed to an objection on which the decision under appeal was based (Art. 12(2) RPBA).

In T 19/20, however, the board took the view that the appellant's submission under Art. 123(3) EPC against the main request (auxiliary request 2 in opposition) was directed to an objection on which the decision was based, even though it was clear from the minutes of the oral proceedings before the opposition division and from the contested decision that no specific objection under Art. 123(3) EPC had been raised against what was then auxiliary request 2. The board underlined that it was undisputed between the parties that the present objection under Art. 123(3) EPC was exactly the same as the objection raised against the main request of the opposition proceedings. Indeed, the amendments in auxiliary request 2 were unrelated to the objection.

(viii) Objection based on document already part of the proceedings but with new reasoning 

In T 652/20 the appellant-opponent raised for the first time in its statement of grounds of appeal an objection of lack of novelty over example 12 of E3 based on the argument that chitin (not only fibroin as previously alleged) anticipated a certain feature of the subject-matter of granted claim 1. The board considered that this new reasoning based on chitin constituted an amendment to the appellant-opponent's case.

(ix) New presentation of known evidence 

In the specific circumstances of T 489/20 the board held that the tabular presentation in documents D30 (filed at the oral proceedings before the opposition division) and D31 (filed with the statement of grounds of appeal) merely highlighted experimental results already reported in the patent itself and additionally only indicated percentages calculated from these results. The content of documents D30 and D31 did there not represent new evidence and the board saw no reason for excluding them from the appeal proceedings.

(x) New arguments vs mere development of arguments 

In T 73/20 the appellant (patent proprietor) argued for the first time in the statement of grounds of appeal that there was a technical prejudice in the prior art, based on common general knowledge, against the combination of D1 and D2. The appellant submitted that this argument was just a development of the arguments put forward in opposition proceedings. The board, however, pointed out that the decision under appeal did not mention at any point the argument that there was such a technical prejudice in the prior art, merely a lack of motivation. See also T 919/22 (defence based on a different effect and problem to be solved).

For the definition of argument in the sense of Art. 12(2) RPBA, see also J 14/19 (summarised in chapter V.A.4.2.3p) below). See also T 250/19, which confirmed this approach albeit in the framework of the application of Art. 12(4) RPBA 2007.