d) Whether submissions were "maintained" at first instance

(i) Party's duty to demonstrate

As underlined by the board in T 246/22, as a general rule, the party making a submission bears the burden of showing that it was "admissibly raised and maintained". See also the further decisions cited above in chapter V.A.4.2.2c) (ii).

(ii) Whether requests were "maintained"

In T 1214/21 a request filed two months before the oral proceedings before the opposition division and a request filed at these oral proceedings were both labelled "New Main Request". The board considered that there was no reason to suggest that the opposition division's understanding that the new main request was supposed to replace the previous one was erroneous. And there was no reason why the opposition division should have clarified the status of the previous request.

The board dealt with a different procedural situation in T 1788/21. In this case the appealed decision was to maintain the patent in amended form on the basis of the then auxiliary request 1. In the appeal proceedings, the respondent (patent proprietor) requested that the patent be maintained according to a set of claims filed as second auxiliary request during opposition proceedings. In the board's opinion, nothing suggested that this request had not been maintained in the first-instance proceedings.

In T 1516/20, the board regarded auxiliary requests 1, 2, 3 and 5 as an amendment to the party's case. In the board's opinion, the requests had been reordered in the opposition proceedings. Specifically, the aforementioned auxiliary requests had been skipped after the opposition division expressed doubts about their allowability. Ultimately, the requests were not dealt with, and no decision was taken on them. Auxiliary request 3 was even replaced with a different auxiliary request 3. The board stressed that appeal proceedings were not conceived as a second opportunity to present a case that had intentionally not been presented for decision at first instance. For the board, the re-filing of auxiliary requests 1, 2, 3 and 5 in their original order, including the re-filing of withdrawn auxiliary request 3, constituted an amendment as per Art. 12(4) RPBA. See also T 206/22.

(iii) Whether objections were "maintained"

In T 526/21 the board observed that the attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division, but not mentioned in the impugned decision. According to the minutes of the opposition oral proceedings the opponents agreed that D9 was the closest prior art and the proprietor argued that example 2 of D2 would be a better closest prior art. The choice between D2 and D9 was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the board considered that the attacks starting from D24 and D34 were not actively maintained.

In T 928/20 the board noted that the respondent admissibly filed Appendix A during the opposition proceedings within the time limit according to R. 116 EPC. This document was not discussed during the oral proceedings before the opposition division, nor was it mentioned in the decision under appeal. Thus, the board considered it to be an amendment pursuant to Art. 12(2) and (4) RPBA. It was, however, admitted. Similarly, see T 2137/22, where the opponent, even when invited by the chair of the opposition division to discuss "candidates" for closest prior art during oral proceedings, did not refer to D1 (which was not admitted in view of Art. 12(6) RPBA).