q) Submissions that were no longer maintained in first instance and counter-examples 

(i) Replaced requests 

Replacing a previously filed request by a new version results "de facto" in the withdrawal of the previous one (T 1897/20, T 687/20, T 541/20).

In T 1897/20 the board explained that, according to Art. 12(2) RPBA, it was decisive on which requests the decision under appeal was based and not for which requests an opinion of the examining division was communicated to the applicant. By replacing previous versions of the claims in the reply to the examining division’s preliminary opinion annexed to the summons, the applicant had renounced the possibility of obtaining a reasoned decision on these requests. As a consequence, the board did not admit the auxiliary requests, which corresponded to these previous requests, into the appeal proceedings.

Similarly, in T 687/20 the board did not accept the appellant’s (patent proprietor’s) argument that the request at issue had not been "actively withdrawn". The request at issue had been replaced by a new version in the course of the oral proceedings. The opposition division’s statement mentioned in the minutes expressed a preliminary opinion. By replacing the previous version the appellant had deprived the first instance department of the possibility to rule thereon. See also T 1094/22, where all previous requests were replaced by a new main request at the oral proceedings before the examining division.

See also chapter V.A.4.2.2d) dealing with the related question of when submissions were "maintained in the proceedings leading to the decision under appeal" within the meaning of Art. 12(4) RPBA.

(ii) Objection no longer maintained 

In T 2137/22 the board noted that the respondent's objection based on document D1 qualified as an amendment under Art. 12(4) RPBA as it had not been maintained in the proceedings leading to the decision under appeal. In fact, in the opposition proceedings, in response to the chairperson's question about the closest prior art, the opponent had only referred to other documents. Since the objection had not been maintained, the Art. 12(6), second sentence, RPBA was lex specialis to Art. 12(4) RPBA and the board did not see any circumstances that justified its admittance.

For a further example, see T 266/23 (withdrawal noted in minutes of the oral proceedings).

(iii) Counter-examples: submissions that were considered maintained 

In T 19/20 the appellant (opponent) raised an Art. 123(3) EPC objection against the main request in opposition. The board considered that this objection had been maintained against lower-ranking requests, which differed from the main request by amendments unrelated to the objection, even if not explicitly repeated. The statement of the appellant before the opposition division that there were no objections under Art. 123(3) EPC against auxiliary request 2 (later main request in appeal) had to be understood as expressing that there were no further objections. Hence, in the board’s view the condition of Art. 12(6), second sentence, RPBA (“no longer maintained”) did not apply.