d) Deletion of claims or alternatives within claims 

It is now widely accepted that even an uncomplicated amendment to a set of claims, for example deletion of an entire claim category, always constitutes an amendment to the appeal case as per Art. 13 RPBA, regardless of whether this alters the factual or legal framework of the proceedings and thus leads to a "fresh case" (see e.g. T 1800/21 with references to the case law; for more recent decisions, see e.g. T 499/20, T 541/20, T 598/20, T 1058/20, T 321/21, T 953/21, T 42/22 and T 1673/22). However, there does appear to be a consistent line of case law developing to the effect that in cases where an uncomplicated amendment of this kind leads to a request on the basis of which the patent can clearly be maintained, any such requests can be admitted as long as the amendment does not alter the factual or legal framework of the proceedings, does not require the matter at issue to be re-evaluated, does not run counter to the principle of procedural economy and does not jeopardise the legitimate interests of any of the parties (examined in depth in T 1800/21 with reference to the case law, following on from T 2295/19; for detail on the discretion to admit, see chapter V.A.4.5.4j).

After the revised RPBA came into force in 2020, the question of whether deleting claims (in particular entire claim categories) constituted an amendment to the appeal case as per Art. 13 RPBA was initially answered in different ways.

In a first line of case law, the deletion of a claim category, of dependent claims or of alternatives within claims were held not to be amendments to the appeal case if the deletion did not lead to a fresh case (see e.g. T 1480/16, T 2638/16, T 884/18, T 914/18, T 995/18, T 1151/18 and T 1857/19). This approach was referred to in T 494/18 and T 2360/17 as the "non-applicability approach". Factors frequently considered by the boards applying the "non-applicability approach" when assessing whether a deletion amounted to an amendment were whether it would alter the factual and legal framework of the case or the subject of the discussions (e.g. T 995/18, T 981/17, T 1569/17, T 1792/19, T 1857/19) or entail thoroughly re-evaluating the matters at issue (e.g. T 2638/16, T 995/18) or whether, instead, it would merely reduce the complexity of the proceedings by eliminating one of the matters in dispute (see e.g. T 995/18, T 2610/19). Example cases where deletions were held not to be an amendment when applying these tests are T 1480/16, T 2638/16, T 995/18 and T 884/18.

This view has been justified, for example, on the basis that it did not appear appropriate to make the formal fact of claims being deleted the reference point for the legal assessment and to determine on this basis alone that there had been an amendment to an appeal case that was sanctionable under Art. 13(2) RPBA and so would as a rule have to be disregarded. That is because it is not the deleted claims that are the subject of the ongoing proceedings, but rather the claims that are left in the request and thus to be decided on by the board. Not taking such requests into account would seem questionable, particularly if the remaining claims were already a subject of the appeal proceedings (Art. 12(2) and (3) RPBA) and thus had already been discussed in the context of the parties' cases (T 2201/19). See also T 1361/19 which pointed out that in the case in hand all of the appellant's arguments and submissions on the remaining part remained unchanged.

By contrast, in a second line of case law, the boards have taken the view that deletions of claims or of alternative embodiments within claims always amounted to amendments and so exercised their discretion under Art. 13 RPBA (see e.g. T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 853/17, T 1569/17, T 2360/17, T 306/18, T 494/18, T 908/18, T 2091/18, T 2604/18, T 2920/18, T 2964/18, T 84/19, T 355/19, T 482/19, T 2295/19, T 541/20, T 1058/20, T 424/21, T 1225/21), in most cases, however, ultimately admitting the requests concerned, though not in e.g. T 2222/15, T 1569/17, T 2360/17, T 482/19, T 84/19, T 2610/19, T 608/20, T 1058/20.

This line of case law has been justified, for example, in that the expression "amendment to the appeal case", which is not defined any further in Art. 13 RPBA, has to be systematically construed in the context of other provisions. Referring to Art. 12(2) and (3) RPBA, it could be concluded that a submission filed by a party and not directed to requests, facts, objections, arguments or evidence contained in the statement of grounds of appeal or the reply to the appeal entails an amendment to the appeal case. In line with this systematic interpretation, therefore, filing an amended set of claims – even if the amendment merely involves claims being deleted – leads to an amendment to the status of the requests in the appeal proceedings (see e.g. T 2295/19 with reference to T 247/20, T 2091/18 and J 14/19). This conclusion based on a systematic interpretation of Art. 12(2), (3) and 13 RPBA was also endorsed e.g. in T 494/18, T 2964/18, T 2920/18, T 355/19, T 1058/20, T 2091/18, T 2295/19.

The board in T 2091/18 held that whether an appeal case had been amended within the meaning of Art. 13(2) RPBA had to be divorced from considerations as to the impact on how the proceedings would progress (followed in T 355/19 and T 541/20). Similarly, in T 494/18 the board criticised that the "non-applicability approach" anticipated a criterion of procedural economy ("change of the factual or legal framework"). See also T 424/21.

In a vast majority of decisions, the boards are now of the view that this is an amendment as per Art. 13 RPBA (see in particular T 1800/21 with further references, and the more recent decisions cited above in the first paragraph). At the same time, when deciding on whether to admit the amendment to the appeal case, most of these decisions have taken into account the aspects of whether or not the amendment leads to an altered factual situation or required the matter at issue to be re-evaluated, and of whether admitting such requests was accordingly consistent with the principles of procedural economy and fair proceedings. In this context, the board in T 2080/18 left it open as to whether the auxiliary request in question could be deemed an amendment to the appeal case (see also T 489/20). However, there has not been a uniform approach as to whether the assessment of "exceptional circumstances" as per Art. 13(2) RPBA leaves any scope for taking such considerations into account. However, there appears to be a consistent line of case law developing in favour of doing so (see T 1800/21 and chapter V.A.4.5.4j) below).