4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA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 T 868/20, auxiliary request 2 was filed for the first time with the grounds of appeal after the opposition division had changed its mind at the oral proceedings by comparison with its view in the preliminary opinion, ultimately deciding that claim 8 as granted was not novel. According to the board, this explained why the patent proprietor had been unable to prepare any auxiliary requests for this situation prior to the hearing. Instead, the auxiliary requests filed previously with the reply to the opposition had been pursued, and one of these had been found allowable. In submitting auxiliary request 2, the patent proprietor was pursuing the legitimate goal of limiting the patent as granted to a lesser extent than in the version held allowable. After consideration of other discretionary factors, the board decided to admit the auxiliary request into the proceedings.
In T 847/20 however, where the opposition division had also diverged from its preliminary opinion at oral proceedings, the board nevertheless held that the auxiliary requests at issue, filed for the first time with the statement of grounds of appeal, should have been filed in the proceedings before the opposition division. The objection which the appellant (patent proprietor) intended to address had already been raised in the notice of opposition. Although the opinion of the opposition division had changed in the course of the proceedings, the appellant had had several opportunities to address this objection by filing new requests and had filed several requests during oral proceedings to this end. The board could not see any valid reason that would justify the filing of further requests to address this very same issue at the appeal stage.