j) Deletion of claims or alternatives in claims 

It is now widely accepted that even an uncomplicated amendment to a set of claims, for example deletion of an entire claim category, always constitutes an amendment to the appeal case as per Art. 13 RPBA, regardless of whether this alters the factual or legal framework of the proceedings and thus leads to a "fresh case" (see e.g. T 1800/21 with references to the case law; for more details, see chapter V.A.4.2.3d)).

However, in the case of deletions of claim categories, dependent claims or alternatives in claims, in a majority of decisions the boards have come – in the circumstances of their respective case – to the conclusion that exceptional circumstances were present and admitted the requests, even if these could have been filed earlier (e.g. T 713/14, T 1224/15, T 1597/16, T 1439/16, T 853/17, T 1569/17, T 306/18, T 1857/19, T 489/20, T 2019/20, T 424/21). The reasons given for this were among other things that the reduced claim-set did not change the scope of the appeal proceedings but simplified the proceedings (e.g. T 306/18, similarly T 2019/20), that it enhanced procedural economy without disadvantaging the opponent (e.g. T 1857/19, T 424/21), that the remaining claims had always been the principle focus in appeal proceedings (e.g. T 489/20), that the principles of procedural economy and procedural fairness were safeguarded (e.g. T 2295/19, in the same vein T 1800/20) that the factual and legal scope of the respondent's appeal case was not altered and the appellant was not faced with any new subject-matter (T 2084/22).

Examples, in which the reduced claim-sets were not admitted may be found in e.g. T 355/19 (auxiliary requests 1 and 2), T 499/20 and T 1558/22. In T 499/20 the requests were not admitted essentially for the reason that the amendment altered the factual or legal framework of the proceedings. In T 355/19 and T 1558/22, however, the boards focussed on the time of filing. In T 1558/22 the board held that filing the amended request only at the oral proceedings despite a previous objection by the appellant was not compatible with the convergent approach.

On the interpretation of "exceptional circumstances", see also chapter V.A.4.5.1d) to V.A.4.5.1g).

(i) Amendments admitted 

In T 424/21 the board (referring to T 1857/19) held that deleting dependent claims 4 and 5 enhanced procedural economy as doing so clearly overcame existing objections without giving rise to any new issues. In the board's opinion these were cogent reasons justifying exceptional circumstances. The board took into account that this deletion did not affect the objections for the other claims, all of which had been addressed in the statement of grounds of appeal, the reply and the board's communication under Art. 15(1) RPBA. The appellant (opponent) was therefore not disadvantaged by the admittance of the request. The board interpreted the wording "shall, in principle," in Art. 13(2) RPBA such that it left the board at least some discretion in its assessment of the alleged exceptional circumstances. Sensibly applying this discretion appeared to be particularly important in technical fields with patents containing a large number of dependent claims. Generally prohibiting the deletion of dependent claims in reaction to the development of the appeal proceedings would require a huge number of auxiliary requests to be filed at an early stage covering all combinations and permutations of possible fall-back positions. This would not be in the interest of procedural economy and not be in line with the aim and purpose of the RPBA.

In T 2295/19 the board admitted auxiliary request 5, from which the substance claims had been removed, even though it considered that it would already have been possible and reasonable to file such a claim set together with the reply to the appeal. Its reason for this was that some boards had acknowledged exceptional circumstances in similar cases so long as admitting the amendment was not detrimental to procedural economy, the convergent approach laid down in the RPBA or the legitimate interests of a party to the proceedings (see T 1598/18, T 1294/16, T 339/19). Agreeing with this approach, the board observed that the wording of Art. 13(2) RPBA did not require that an amendment be triggered by exceptional circumstances. It was instead enough that exceptional circumstances existed, and these could therefore be of a legal nature too. That did not conflict with the explanatory remarks (Supplementary publication 1, OJ 2020, Annex 2, 221), which appeared to illustrate only the main scenario for applying the rule. In addition, a teleological interpretation, which takes into account the purpose of the power enshrined in Art. 114(2) and 123(1) EPC to disregard facts, evidence and requests not submitted in due time, seemed to support this conclusion. The "travaux préparatoires" for the EPC 1973 (see T 122/84, T 951/91) showed that this procedural possibility was intended to prevent parties from improperly delaying the proceedings. In the board's view, there was no reason to disregard requests filed at a late stage in the proceedings unless there was a risk of prejudice to the principles of procedural economy and fair proceedings (see also T 339/19). See also e.g. T 2920/18 (decided by the same board), T 2186/21 and T 2022/22.

The board in T 355/19, while pointing out in relation to auxiliary requests 1 and 2 that a "trial-and-error" approach or tactics by elimination ("salami" tactics) were not acceptable in proceedings of a judicial nature, admitted auxiliary request 3 on the basis that the amendments had been made well in advance of the oral proceedings and the deletion of claims clearly simplified the matter to be examined. See also T 376/22.

In T 489/20 the board, citing T 2080/18 (see chapter V.A.4.2.3d) above), admitted the new main request, in which all process claims had been deleted, as these deletions merely set aside the objection of lack of inventive step against the process as defined in claim 20 as granted (explicitly raised for the first time one month before by the respondent) without affecting the issues, submissions and conclusions with regard to the remaining claims, which had always been the principal focus of the opposition and appeal proceedings.

In T 2019/20 all product claims had been deleted from the request filed during the oral proceedings before the board. The board considered that the claimed subject-matter and the attacks against it were fully encompassed by both the appellant's and the respondent's initial appeal case within the meaning of Art. 12(1) to (3) RPBA. Moreover, the request limited the potential issues for discussion. This meant that, in view of the totality of the facts of the present case, the filing of this request, although formally an amendment, in substance did not constitute an amendment of a party's case within the meaning of Art. 12(4) RPBA, but rather a partial abandonment of the initial appeal case. There was no apparent reason not to admit such a request under any of the Art. 12(5) RPBA, Art. 13(1) RPBA or Art. 13(2) RPBA.

In T 1800/21 only the device claims remained in auxiliary request V, which had been filed after notification of the summons to oral proceedings. Interpreting the term "exceptional circumstances", the board endorsed the view taken in T 2295/19 that Art. 13(2) RPBA was intended to safeguard the principles of procedural economy and procedural fairness and that an auxiliary request could therefore be admitted if the amendment did not alter the factual or legal framework of the proceedings, did not require a re-evaluation of the matter at issue and did not run counter to procedural economy or the legitimate interests of any of the parties. A consistent line of case law appeared to be developing to the effect that exceptional circumstances within the meaning of Art. 13(2) RPBA could be accepted where an uncomplicated amendment such as the deletion of a whole claim category led to a request on the basis of which the patent could clearly be maintained. The board considered this line of case law to be in keeping with the convergent approach established by the RPBA, also in terms of the degree of relevance required of the amendment.

(ii) Amendments not admitted 

The board in T 355/19 conceded that cases where claims could be admissibly deleted at a late stage in the proceedings were possible, but that did not mean that the proprietor was completely free to adapt the claims throughout the proceedings, and especially not when the starting point was a claim set with seven independent claims and amended sets of claims had repeatedly been filed over the course of the proceedings. Giving a party that freedom would amount to allowing it to take a "trial-and-error" approach or use a process of elimination ("salami" tactics), both of which were unacceptable in any kind of proceedings, let alone in those of a judicial nature such as appeal proceedings. See also T 172/22.

In T 499/20, which concerned the deletion of alternatives within a claim, the board first observed that the filing of a set of claims in which granted claim 1 was further limited would already have been possible and reasonable with the reply to the statement of grounds of appeal. Moreover, the board held that the limitation in the first auxiliary request did not simplify the procedure in the sense that it would immediately overcome the objection of lack of inventive step. Therefore, it could not be held that the first auxiliary request did not alter the factual or legal framework of the proceedings, nor that there was no need for a re-weighting of the subject of the proceedings.

In T 1558/22, however, the factor the board based its assessment on was not whether the proceedings were simplified but rather the procedural conduct of the respondent (patent proprietor). It had argued that its auxiliary request 4a (in which two method claims had been deleted) was a corrected version of auxiliary request 4, which had already been filed during the opposition proceedings and then again with the reply to the appeal. There had been an obvious error in the deleted method claims, in that certain restrictive features had been left out by mistake. The board, however, could not see any obvious error and similarly did not consider the correction to be obvious. It also found that the respondent could not have been taken by surprise at the oral proceedings by its opinion on inventive step of claims 12 and 13 according to auxiliary request 4. The respondent could not assume that where the preliminary opinion did not reiterate objections in relation to subordinate auxiliary requests, the objections did not apply to those requests, even though the facts were the same. The respondent had first sought to make amendments in response at the oral proceedings, but the board considered that it was precisely that kind of wait-and-see procedural conduct that the convergent approach laid down in the RPBA was designed to prevent. The board therefore held that there was no exceptional circumstance beyond the respondent's sphere of responsibility that might have justified the late filing of auxiliary request 4a. That made it irrelevant whether other criteria for exercising discretion laid down in Art. 12(4) and 13(1) RPBA (e.g. whether the amendment was uncomplicated) – which could be considered in addition to the strict requirements of Art. 13(2) RPBA – had been met.