9.6.4 Opportunity to comment

The fact that a party has refrained from commenting on the substance of requests, though they had had ample opportunity, carries little weight in deciding to remit or not. Where the version as upheld by the opposition division fails on appeal, it is to be expected that undecided lower-ranking requests that are clearly not inadmissible, for example because they were duly filed in opposition, would most likely need to be examined by the board for the first time. Such circumstances did not constitute special reasons for remittal. In T 184/19 auxiliary requests 3, 4, 5 and 6 corresponded to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition and which were not examined. The appeal was directed at the opposition division's interlocutory decision concerning maintenance of the patent in suit in amended form. Opponent 1 had requested remittal should these auxiliary requests 3, 4, 5 and 6 be admitted, as it could not have been prepared to discuss these requests. The board noted that the appellant proprietor and opponent 1 had both in fact made substantive submissions for these requests, and that in principle they could be discussed within that framework.