Résumé de Art 13(2) RPBA 2020 pour la décision T2019/20 du 21.11.2023

In T 2019/20 the board had to decide on the admittance of auxiliary request 1 filed by the respondent during oral proceedings before the board. This request consisted of independent claim 1 which was identical to independent claim 17 of the patent as granted (main request) and 10 dependent claims, which were likewise identical to claims in the patent as granted. All product claims had been deleted. The board noted that all the issues to be discussed for auxiliary request 1 would also have had to be discussed for the main request (patent as granted) if claim 1 of this request had been found to involve an inventive step, which was a plausible outcome in view of the findings of the opposition division's decision to reject the opposition. Therefore, the filing of auxiliary request 1 during the oral proceedings before the board did not bring in unexpected new issues to be dealt with. The board concluded that the substance of this request - i.e. the claimed subject- matter and the attacks against it - was fully encompassed by both the appellant's and the respondent's initial appeal case within the meaning of Art. 12(1) to (3) RPBA. The request certainly limited the potential issues for discussion. In the board's opinion, this meant that, in view of the totality of the facts of the present case, the filing of this request, although formally an amendment and as such potentially subject to the strict provisions of Art. 13(2) RPBA, in substance did not constitute an amendment of the party's case within the meaning of Art. 12(4) RPBA. It rather constituted a partial abandonment of the initial appeal case. The board held that there was no apparent reason not to admit the request under any of Art. 12(5), 13(1) or 13(2) RPBA, and decided to admit the request under its discretionary powers pursuant to Art. 13(1) RPBA.