4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA
In several decisions, the boards found that, in the circumstances of the case in hand, a new (main or auxiliary) request, filed in response to a new objection raised at the first-instance oral proceedings, need not have been submitted at those oral proceedings pursuant to Art. 12(6), second sentence, RPBA.
In T 218/20 the respondent (proprietor) filed auxiliary requests 1 to 5 with its reply to the grounds of appeal. The board accepted that these requests had been filed in response to new inventive step objections first raised in the oral proceedings before the opposition division. In the board’s view, there was no need at that moment to file any further auxiliary requests as the opposition division was not convinced by these objections. Thus, the respondent had availed itself of the first opportunity to respond to these attacks. The board further held that the requests seemed to be fair and appropriate reactions and therefore justified in the sense of Art. 12(4) RPBA. Similarly T 121/20 and T 172/20. See also the decisions in chapter V.A.4.3.7c).
In T 315/21 the board examined whether the appellant (proprietor) should have filed the amendment in question (removal of a comma from the main request, on which the impugned decision was based) already at the oral proceedings before the opposition division when the related objection of clarity was first raised. The board noted that this objection was raised together with a number of further clarity objections, some of which were also new, and held that the patentee was not in a position to find an appropriate response to this complex situation in the little time given during the oral proceedings. Nor was this a situation of its own making as it had filed what was then the main request more than one and a half years before the oral proceedings. Thus the board did not consider that the proprietor should have filed the present main request during oral proceedings before the opposition division.
In T 849/22 the new main request was basically identical to the main request in the opposition proceedings apart from an amendment to address an objection under R. 80 EPC, which had been raised for the first time at the first-instance oral proceedings. The board observed that this request theoretically could have been submitted at these oral proceedings. However, the opposition division had also – incorrectly, in the board's view – considered the main request in opposition to be prima facie unallowable for prima facie lack of novelty of claim 1. The board concluded that presenting the new main request during the oral proceedings would thus foreseeably have resulted in a further non-admittance finding based on the same (wrong) ground. Consequently, it could not be considered that the new main request should have been submitted during the opposition proceedings.