f) Deletion of claims or alternatives within claims 

A recurrent topic that the boards have dealt with when applying Art. 13(1) RPBA are requests in which the claimed subject-matter has been limited by deletions of claims or alternatives in claims. In these cases the issue arises whether this is an amendment within the meaning of Art. 13 RPBA in the first place, which is answered in the affirmative by the majority view. For decisions on this issue, see chapter V.A.4.2.3d). Decisions deciding on admittance under Art. 13(1) RPBA are summarised in the following. For decisions dealing with requests limited by deletions of claims and alternatives in claims filed at the last stage of the appeal proceedings, see chapter V.A.4.5.4 j).

In T 1597/16 the admission of the new main request, which had been filed before the entry into force of the 2020 version of the RPBA, was at the board's discretion under Art. 13(1) RPBA (which applied instead of Art. 13(2) RPBA by virtue of the transitional provisions). In the board's view, the respondent had not given any cogent reasons for waiting until the final stage of the appeal proceedings to file the amendment to the claim. The objections it mentioned had been part of the appeal proceedings from the outset. Nonetheless, the board decided to admit the new main request into the proceedings for the following reasons. Limiting the claimed subject-matter to two out of the three alternatives in claim 1 as granted did not lead to any other disputed points of fact or patent law. The appellant (opponent) had been able to formulate an objection for lack of inventive step straight away and could otherwise refer to its written case, which matched that from the first-instance proceedings. Moreover, the board considered the new request to be prima facie allowable since it appeared to overcome all remaining objections without creating any new issues.

Similarly, in T 494/18 the board admitted auxiliary request 8 (directed exclusively to method claims, the product and use claims having been deleted), considering among other things that the respondent had provided reasons for submitting the amendment at this stage of the proceedings, that the closest prior art for the discussion of the opponent’s sole objection against inventive step did not change and that the additional comments of the parties for the assessment of inventive step merely specified their previous arguments. The board also considered that the method of this new request was prima facie clearly allowable under Art. 123(2) and 56 EPC.

In T 682/16 the board noted that, by deleting certain claims, the respondent had addressed all issues raised by the appellant and by the board. The request, which moreover did not give rise to new objections and contributed to the efficiency of the procedure, was admitted under Art. 13(1) RPBA (the 2020 version of Art. 13(2) RPBA not being applicable yet). See also T 1439/16 and T 2897/18 (both referring to procedural economy).

In T 608/20 the board reached a different conclusion in the circumstances of the case. It considered that the request limited to the method claims could and should have been submitted in the first-instance proceedings, or at the very latest together with the appeal grounds and it did not consider that the circumstances in the appeal proceedings justified its admittance (Art. 12(6), Art. 13(1), second sentence, RPBA). In particular, the board took the view that, taking into account the circumstances in the opposition proceedings, the refusal to grant a further possibility to submit an amended request in the afternoon of the third day of oral proceedings could not justify the admittance of further auxiliary requests at a later stage in the appeal proceedings.