4.5.4 Admittance of new requests

The main principles of the case law on admitting new submissions at the third level of the convergent approach have already been outlined in chapter V.A.4.5.1. Structured around particular procedural situations or topics, the following now looks in more detail at the case law on admitting new requests.

a) Waiting for the preliminary opinion not compatible with convergent approach

b) Justified response to new objections raised in board's communication, in subsequent submissions or at oral proceedings

c) Justified response to an objection – earlier response could not be expected

d) Purpose of oral proceedings especially in ex parte proceedings

e) No carte blanche to amend claims at will – criteria set out in Articles 13(1) and 12(4) RPBA

f) Board's preliminary opinion that confirms in essence objections or arguments previously raised

g) Other cases in which amendments should have been filed earlier

h) Change of the board's opinion

i) Repeated attempts at overcoming deficiencies

j) Deletion of claims or alternatives in claims

k) Amendment not detrimental to procedural economy and no other party negatively affected

l) Right to be heard violated and no other party affected

m) Prima facie and clear allowability

n) Editorial amendments to remove inconsistencies and typographical errors

o) Adaptation of the description

p) Response to a large number of objections

q) Requests reordered

r) Procedural requests – requests for non-admittance of other party's submissions

s) Circumstances in the sphere of the representative

New decisions

T 0396/23

In T 396/23 the patent proprietor requested at the oral proceedings that the decision under appeal be set aside and that the patent be maintained on the basis of the main request or on the basis of one of the auxiliary requests 1 to 16 as filed with its statement of grounds of appeal, or auxiliary requests 17 to 20 as filed with its reply to the opponent's appeal, or auxiliary requests 21 to 40 as filed in reply to the opponent’s rejoinder, or auxiliary request 41 or 42 as filed in reply to the communication under Art. 15(1) RPBA.

At the oral proceedings the board came to the conclusion that claims 1, 2 and 3 of the main request did not meet the requirements of Art. 83 EPC. Neither did auxiliary requests 1 to 40 which contained the features at issue. The subject-matter of claim 1 of the main request was also found to lack novelty over D1.

With regard to admittance of auxiliary request 41, the board observed that, when exercising its discretion under Art. 13(2) RPBA, it may also rely on the criteria set out in Art. 13(1) RPBA.

Auxiliary request 41 corresponded to auxiliary request 18 filed with the proprietor’s reply to the opponent’s statement of grounds of appeal, but with claims 1 and 2 removed. The remaining claim of auxiliary request 18, claim 3, was based on independent claim 16 as originally filed, i.e. it had been in the proceedings as an independent claim throughout (although it comprised all of the features of another independent claim). The board underlined that, by drafting claim 3 as one of three independent claims and by presenting arguments in respect of its patentability, the proprietor had clearly indicated its intention to defend this embodiment. Hence, the filing of auxiliary request 41 did not result in a situation for which the opponent or the board were unprepared.

The board pointed out that the admittance of auxiliary request 41 did not change the legal or factual framework of the case and did not require any new substantive discussion. A claim including the restriction contained in the sole claim of auxiliary request 41 had been included in the independent claims ever since the reply to the notice of opposition. A claim including two further features at issue of the sole claim had likewise been on file since the reply to the notice of opposition and had been discussed in the written proceedings. Indeed, the submission of auxiliary request 41 merely served to remove some of the points of dispute, without introducing any new aspect to be discussed, thus improving procedural economy.

The board concluded that the admittance of auxiliary request 41 was compatible with the principles of both procedural economy and procedural fairness and did not change or add anything to the subject of the appeal proceedings. In other cases where new requests were filed that satisfied these conditions, a considerable amount of case law had concluded that there were exceptional circumstances within the meaning of Art. 13(2) RPBA justifying the admittance of the new requests (see e.g. T 2022/22 and the decisions cited therein). The board therefore decided, in view of the circumstances above, to admit auxiliary request 41 into the appeal proceedings.

Since auxiliary request 41 was found to be novel and inventive, the case was remitted to the opposition division with the order to maintain the patent on the basis of auxiliary request 41 and a description to be adapted thereto.