4.5.4 Admittance of new requests
Irrespective of whether the admissibility of new claim requests under Art. 13(2) RPBA is examined in one or two steps (on this, see chapter V.A.4.5.1g)), exceptional procedural developments justifying a response never give carte blanche (see T 1080/15) to make just any amendment whatsoever to the claims. Instead, the "new objections" aspect is treated as just one of several criteria, including the complexity of the amendments made or whether they are clearly allowable (as was made clear in e.g. T 2632/18 with reference to T 2271/18, T 1482/17 and T 1278/18).
According to established case law, at the third level of the convergent approach, the boards may, in the exercise of their discretion under Art. 13(2) RPBA, also rely on criteria applicable at the second level of the convergent approach, i.e. those set out in Art. 13(1) RPBA (see e.g. T 989/15, T 2010/15, T 584/17, T 954/17, T 752/16, T 764/16, T 709/16, T 855/16, T 101/18, T 995/18, T 1869/18, T 416/19, T 541/20, T 920/20, T 1780/20, T 719/22). As underlined e.g. in T 2429/17, this includes the criteria applicable at the first level of the convergent approach, i.e. those set out Art. 12(4) to (6) RPBA (see also the reference to these provisions in Art. 13(1), second sentence, RPBA).
(i) Whether amendments prima facie overcome the issues raised and do not give rise to new objections
As noted in T 1107/16, according to the explanatory remarks on Art. 13(1) RPBA, the onus is on the appellant to demonstrate both why the amendment overcomes the issues raised by the board and why the amendment, prima facie, does not give rise to new objections.
In ex parte case T 1609/16 the board noted that the main request had manifestly been filed in reply to new clarity objections raised in its preliminary opinion. Moreover, the amendments to the original claims were straightforward, clearly addressed the outstanding issues in a manner already contemplated in the board's written opinion, and did not introduce any new subject-matter or raise new objections requiring further consideration. Hence the board decided to admit the main request into the appeal proceedings.
For further cases where the boards examined these criteria and were satisfied that they were fulfilled, see e.g. T 1107/16, T 1338/16, T 545/18, T 1278/18, T 416/19, T 655/19.
In the examples below, by contrast, the criteria were not fulfilled and the boards therefore refused to admit the requests.
In T 953/16 the appellant (applicant) submitted that the new auxiliary requests at issue were a legitimate response to a clarity objection raised by the board in its communication under Art. 15(1) RPBA. The board noted, however, that although the amendments made to claim 1 in these requests constituted an attempt to clarify the claims, the inventive-step objections raised by it in its communication had already taken the features concerned into account in the interpretation of claim 1. It was therefore apparent to the board that the amendments did not add anything of substance to the discussion of inventive step and, therefore, they did not address all of the outstanding issues raised by it. In view of its negative conclusions on inventive step for the higher-ranking requests, the board saw no exceptional circumstance that could justify the admission of the new auxiliary requests into the appeal proceedings.
In T 709/16 (ex parte) the board exercised its discretion under Art. 13(2) RPBA in view of the suitability of the amendment in auxiliary request I to resolve the issue of lack of inventive step raised by the board. However, the amendment was not suitable to resolve this issue as it was only meant to clarify a certain feature and the inventive-step objection against the main request had already been based on the understanding this led to.
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. Consequently, and irrespective of the discussion whether there were exceptional circumstances that would justify filing the new requests at this very last stage of the procedure, auxiliary requests 4A to 4C were not admitted into the proceedings under Art. 13(1) and (2) RPBA, because they prima facie could not overcome the objections under Art. 123(2) EPC without infringing the requirements of Art. 123(3) EPC.
For further cases where the new requests were not admitted because, among other things, they did not (prima facie) overcome the issues raised, see T 2429/17 (ex parte, clarity objection), T 2692/18 (inter partes, inventive step objection), T 884/18 (inter partes, issue of priority), T 2271/18 (ex parte, clarity objection), T 416/19 (ex parte, mere presentation of information), T 920/20 (inter partes, objection under Art. 123(2) EPC, new requests filed only at oral proceedings).
For further cases in which the new requests gave rise to new objections, see e.g. T 995/18 (inter partes, objection under Art. 123(2) EPC), T 2271/18 (ex parte, clarity objection), T 855/16 (ex parte, objection under Art. 123(2) EPC), T 920/20 (inter partes, objection under Art. 123(2) EPC, new requests filed only in oral proceedings), T 2795/19 (ex parte, objection under Art. 123(2) EPC, request substituting all former requests filed only at oral proceedings).
(ii) Procedural economy and complexity
In T 764/16 claim 1 of the amended auxiliary requests necessarily included a feature, which had been only optional in claim 1 of the main request. The board, however, observed that there had been no discussion of this feature in the contested decision, the proceedings at first instance having concentrated on objections relating to alternative feature 1k. Moreover, it considered the feature to require interpretation. Filing the auxiliary requests after the summons thus confronted the board and the appellant with new facts involving complex issues which, if the requests were admitted, might mean having to remit the case to the opposition division. The amendments in the auxiliary requests were therefore detrimental to procedural economy. The board could not see any exceptional circumstances within the meaning of Art. 13(2) RPBA that could have justified the late filing of the auxiliary requests.
In T 920/20 the board observed that the respondents could already have responded to the appellants' objections under Art. 123(2) EPC in their reply to the appeal. It further found that the criteria set out in Art. 13(1) RPBA, which could be relied on additionally when applying Art. 13(2) RPBA (see e.g. T 989/15), were not met, because the combination of granted claims on which the new claim 1 was supposed to be based resulted in a completely new and complex case in which it was extremely doubtful "prima facie" whether the proposed amendments could overcome the objections raised and also likely that they would give rise to new objections. The board considered that the thorough discussion which would be required would be detrimental to procedural economy and highly unreasonable at such a late stage in the proceedings.
In T 541/20 the board also considered, in addition to prima facie allowability of the amendments, that they had reduced the complexity of the case, as the objections against the deleted claims became moot, and hence admitted the request at issue.
(iii) Convergence
In T 528/19 the board pointed out that convergence was a criterion for use when considering procedural economy for the purposes of Art. 13 RPBA.
In T 1436/19 the appellant (patent proprietor) requested a few weeks before the oral proceedings to reorder the requests filed with the statement of grounds of appeal. The board decided that this constituted an amendment to the appellant's appeal case and that it could not be taken into account, inter alia because the proposed reordering of the requests clearly resulted in lack of convergence thereof. See also chapter V.A.4.5.4 q) "Requests reordered".
In ex parte case T 1080/15 the independent claims of auxiliary request VII, filed after notification of the summons to oral proceedings, related to an embodiment disclosed in one of the figures and in the description which, however, had never been claimed. The embodiment had not been examined and did not amount to a converging development of the subject-matter claimed in any of the higher-ranked auxiliary requests. The board held that, although an objection raised for the first time by the board could qualify as an exceptional circumstance justifying the admission of a request, it did not give the appellant carte blanche to amend the claims at wish. The amendments should, as a rule, remain within the framework of the embodiments that had been examined by the first-instance department.
A further example can be found in T 1717/17.