4.4.5 Discretion under Article 13(1) RPBA – new requests
As outlined in chapter V.A.4.4.4, the onus is on a party to explain and justify any amendment to its case. This includes demonstrating that any amendment to a patent application or patent prima facie overcomes the issues raised by another party in the appeal proceedings or by the board and does not give rise to new objections.
(i) Request does not prima facie overcome objection
In T 1187/15 (in which, in accordance with Art. 25(3) RPBA, Art. 13(2) RPBA did not yet apply) the board, in the exercise of its discretion under Art. 13(1) RPBA, took into account, whether the appellant (applicant) had demonstrated that the amendments, prima facie, overcame the issues raised by the board and did not give rise to new objections. The board noted that this was a key criterion developed in the boards' case law on the exercise of their discretion under Art. 13(1) RPBA 2007 (CLB, 9th edn. 2019, V.A.4.4.2). Art. 13 RPBA 2007 also applied in the case in hand (Art. 25(3) RPBA). The board found that, prima facie, auxiliary request XI did not overcome the objections under Art. 123(2) EPC since the omission of certain features constituted an unallowable intermediate generalisation. In view of this and the fact that the appellant had had an opportunity to respond to the points raised by the board of its own motion, the board exercised its discretion not to admit auxiliary request XI into the proceedings. Moreover, the board rejected the appellant's request for another interruption to enable it to prepare another request to replace auxiliary request XI. It was not compatible with the principle of procedural economy that oral proceedings were conducted in such a way that the appellant was given the opportunity to repeatedly file new requests until a version of the claims was found that was acceptable to the board.
In T 1338/16 (in which Art. 13(2) RPBA did not yet apply), the board considered, in view of the appellant's submissions, that the amendments made in the main request and auxiliary requests 1 to 3 were primarily directed to overcoming objections in relation to added subject-matter, clarity and support, but prima facie did not overcome its objections to patentability under Art. 54 and 56 EPC. Consequently, the board exercised its discretion under Art. 13(1) RPBA not to admit these requests into the proceedings.
In T 700/15 too, the board concluded (with regard to requests 1', 1'0, 1'a, etc.) that the appellant (patent proprietor) had not, as required under Art. 13(1) RPBA, demonstrated that the amendment in the auxiliary requests prima facie overcame the issues raised by the board.
More decisions on the duty to provide reasons showing that an amendment overcomes the objections raised are reported in chapter V.A.4.4.4c) "Requirement to substantiate the amendments to the patent application or patent".
(ii) Claim amendments that prima facie give rise to new objections
In T 700/15 the board had doubts about whether claim 1 of each the auxiliary requests at issue (0, 10, 1a0, etc.) was compatible with Art. 123(2) and 84 EPC. The claim contained a feature related to the result envisaged in the application. Finding that the amendments made in claim 1 of each of the auxiliary requests gave rise, at least prima facie, to new objections, the board exercised its discretion under Art. 13(1) RPBA not to admit the auxiliary requests.
The board in T 136/16 likewise exercised its discretion not to admit two auxiliary requests, in particular because the amendment in auxiliary request 1 gave rise prima facie to a new objection under Art. 84 EPC. It also considered that the amendment could and should have been made at an earlier stage in the proceedings.
In T 2257/19 the board found that an inescapable trap intrinsically precluded the admission of new requests under Art. 13(1) and (2) RPBA, as the requirements of Art. 123(2) and (3) EPC could not both be satisfied.
(iii) Claim amendments that overcome the objections
In T 851/18 of 10 January 2020 date: 2020-01-10 (in which the 2020 version of Art. 13(1) RPBA, but not of Art. 13(2) RPBA, was applicable under Art. 25(3) RPBA), the auxiliary request in question differed from the claims with which the patent had been maintained by the opposition division in two respects. First, its claim 1 combined the subject-matter of claims 1 and 3 as maintained. Second, the subject-matter of claim 3 had also been included in the second independent claim 7 for the first time. The board considered that these two amendments were relatively straightforward, did not give rise to any new issues and were appropriate and so, despite the late stage reached in the proceedings, saw no reason not to admit the auxiliary request. The inclusion of the features of claim 3 as maintained in claim 1 amounted, in essence, to a deletion of the broader claim 1 as maintained and answered all the objections in a procedurally efficient way, while claim 3 as maintained had not been contested in the proceedings up to that point. The second amendment obviously overcame a novelty objection the board had raised to claim 7.
In T 2044/20 the board considered it sufficient that all grounds discussed in the appealed decision were overcome. The filing of auxiliary request 1, filed in reaction to the reply to the appeal, was considered an appropriate reaction of the appellant to the course of the opposition proceedings, where the appellant had found itself in a so-called inescapable trap, in which scenario, as noted by the board, it is usually not self-evident how to overcome an objection under Art. 123(2) EPC. The further grounds for opposition pursuant to Art. 100(a) and (b) EPC had not been discussed conclusively in the opposition proceedings. Hence, the board saw no reason why the appellant should be limited to filing auxiliary requests which on a prima facie basis overcame all outstanding objections raised in the opposition proceedings. The purpose of the appeal proceedings was instead to focus on the grounds discussed in the appealed decision.
In several decisions dealing with late-filed requests in which certain claims had been deleted, the boards have admitted these requests inter alia because they were considered prima facie allowable. For instance, in T 1597/16 the board considered that the new request did not lead to any other disputed points of fact or patent law, that the opponent was thus able to react and that the request prima facie allowable since it appeared to overcome all remaining objections without creating any new issues.