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

In some cases involving objections or arguments that were not entirely new but had in fact already been submitted at first instance or in the opposing party's written submissions, the boards have nevertheless decided that filing requests in response at an earlier stage could not have been expected.

(i) Response to individual aspect of an overall unconvincing line of argument 

In ex parte case T 916/21 the amendments made in auxiliary request 3 were a response to an explanation of the interpretation of the claims given in the board's preliminary opinion. The same explanation had already appeared in the contested examination decision, but there it was just part of a line of argument that was fundamentally unconvincing as a whole. In the board's view, the appellant could not have been expected to file amendments in response to this individual aspect of an overall unconvincing line of argument as early as when filing the appeal. The board therefore treated the amendments as a response to its preliminary opinion and admitted them on the basis that the request clearly met the EPC requirements and so it could take a decision without holding oral proceedings.

(ii) Early objection raised but not pursued by examining division 

In T 922/17 the board took into consideration that, while the objection at issue had already been introduced by the examining division in an earlier communication, it was contained in neither the communication underlying the contested decision with respect to the main request nor the contested decision. The board therefore held that, in the case in hand, the fact that it had reintroduced the Art. 123(2) EPC objection in its communication under Art. 15(1) RPBA could be regarded as an exceptional circumstance within the meaning of Art. 13(2) RPBA. Moreover, the effect of the amendments at issue was readily apparent, such that the board was satisfied that the appellant had justified the amendments by cogent reasons as required by Art. 13(2) RPBA.

However, see also the following decisions, in which the boards considered the requirement of exceptional circumstances not to be fulfilled for objections or arguments that had already been raised by the examining division: T 2778/17, T 2279/16, T 14/20, T 1080/15, T 597/16, T 689/15.

(iii) Objection raised previously but without substantiation 

In T 1224/15 the appellant (patent proprietor) had filed a new auxiliary request 3 in response to an objection raised by the board under Art. 123(2) EPC in its preliminary opinion. The respondent (opponent) contended that this objection had already been raised in its reply to the grounds of appeal. The board, however, observed that the respondent had merely referred to its notice of opposition and had not countered the arguments on which the contested decision was based, as was required under Art. 12(2) RPBA 2007. This objection was therefore disregarded. The board thus considered the amendment made in auxiliary request 3 to be a direct response to its preliminary opinion. Since this amendment (deletion of a dependent claim) also did not give rise to any new objection or entail any change to the arguments in support of insufficient disclosure and lack of novelty, the board found the new request admissible (Art. 13(2) RPBA).

(iv) Objection of opposition division not reflected in the appealed decision 

In T 1771/17 the respondent (proprietor) filed new auxiliary request 2B in response to the board's objection under Art. 123(2) EPC against auxiliary request 2A in its communication under Art. 15(1) RPBA. The board considered that it was irrelevant whether the opposition division had already referred to the objected claim wording in its preliminary opinion, as this was in any case not reflected in the decision under appeal. Nor had the appellant raised this issue against auxiliary request 2A which had been filed with the reply to the appeal. Thus, the objection was not part of the appeal proceedings until it was mentioned in the board's communication and the respondent had no reason to file auxiliary request 2B earlier. Moreover, no new issues were raised by auxiliary request 2B. The board admitted this request.

(v) Response to further development of an argument 

In T 1609/19, the appellant’s arguments had developed at the oral proceedings and finally led to the board’s conclusion on novelty. The board underlined that it was thus appropriate to give the respondent an opportunity to react to this new line of argument as it could not have anticipated the way in which the appellant’s arguments would develop. The board held that a party's argument developing in such a way as to be decisive for the decision on the request, yet not being seen as a change of the party's case, was to be seen as an exceptional circumstance which in the present case justified taking auxiliary request 12 into account.