4.4.4 Party's duty to justify amendment
(i) Explanation required with regard to the request at issue and in view of all outstanding objections
In T 667/18 the board noted that it was established case law that requests which were not properly substantiated were not admissible. In the case in hand, the claims of the new main request filed in reply to the board’s preliminary opinion (but Art. 13(2) RPBA not yet applicable) combined features which had never been claimed before, without any explanation. In the board’s view this was detrimental to procedural economy. As regards inventive step, the appellant’s (applicant’s) submissions were restricted to an unclear reference to items in its statement setting out the grounds of appeal, which related to novelty and inventive step of the then main request.
In T 2222/15 auxiliary requests 2.2 and 2.3 had been amended by the deletion of the method claims so that only the device claims remained. The board observed that the claimed product was essentially defined by the method. The objection of lack of novelty against the method was, therefore, equally relevant to the product, even if this was not explicitly mentioned in the statement of grounds of appeal. The board held that if the subject-matter of the product claims was patentable on grounds different from those that applied to the method claims, these grounds would have had to be submitted as a justification for the amendment.
In T 608/20 the board pointed out, among other things, that the appellant, when submitting auxiliary request 8 as a reaction to the respondents' allegedly new objections on inventive step in their replies to the grounds of appeal, failed to substantiate this amendment of its appeal case in view of the other outstanding objections, contrary to the further requirement of Art. 13(1), fourth sentence, RPBA.
In T 938/20 the board noted that "giving rise to new objections" was understood to mean that the appellant had to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, OJ 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It did not mean that any new objection raised by the opponents – whether justified or not – rendered the request inadmissible. In the case in hand it meant in particular with respect to Art. 123(2) EPC that a basis for the amendment should be easily recognisable, which was the case.
(ii) Self-evident substantiation
In T 32/16, in its written response the respondent (patentee) had stated from where the amendment was taken (Art. 12(4) RPBA). The board noted that the introduced terminology was an explicit recitation of the language used in the application as filed. Demonstration of how these amendments overcame the objection in this particular case, where the lacking features as such had already been identified by the appellant (opponent), was thus self-evident in the amendments made.
By contrast, the board in T 700/15 found that the appellant (patent proprietor) had not demonstrated, as required under Art. 13(1) RPBA, that the amendment – namely new auxiliary requests (1’, 1’0, 1’a, etc.) – overcame, prima facie, issues raised by the board; nor was this apparent to the board from the amendment itself. It therefore refused to admit the auxiliary requests.
(iii) Impact of insufficient substantiation on valid filing
In T 319/18 (where it was not immediately apparent how auxiliary request 5 was directed to overcoming the inventive-step objection over document D1) the board pointed out that it was established jurisprudence of the boards that requests that were not self-explanatory became effective only on the date on which they were substantiated (with reference to T 1732/10). See also T 2457/16.
A contrary view was however taken in T 1220/21. In this decision the board held that a lack of or insufficient substantiation of a request could lead to its non-admittance, but this did not imply that the request had not been validly filed. For a discussion of the two approaches to this question, see also T 321/21.