2. Order of requests

The established system of main and auxiliary requests in the proceedings before the EPO provides that parties, when filing alternative sets of claims, must indicate the order of preference for each set of claims (R 14/10, T 1125/13 of 25 June 2015).

Before a decision can be taken on the basis of an auxiliary request, the main request has to be examined and decided upon (T 484/88). The board in T 169/96 pointed out that, under Art. 113(2) EPC 1973, the EPO was bound by the requests of the applicant or proprietor, and, in the case of main and auxiliary requests, this meant that the EPO was also bound to the order of the requests (see also T 540/02). However, in T 911/06 (relating to examination of the correctness of the first instance decision as a lower ranking request) the board held that this principle did not necessarily apply to the proceedings before the boards, see in this chapter III.I.9., below.

In the proceedings underlying R 8/16 the board had revoked the patent. The Enlarged Board held that, as a matter of principle, the technical board was free to examine the (pending) claim requests in any order, and therefore it was also free to conduct the discussion on them in any order, without having to give reasons. The principle of party disposition expressed in Art. 113(2) EPC did not extend so as to permit a party to dictate how and in which order a deciding body of the EPO might examine the subject-matter before it. The only obligation on the EPO was not to overlook any still pending request before a final decision was taken. The order of examination or discussion was a question of procedural economy, for which mainly the deciding body was responsible. As long as a discussion on the substantive issues of the still pending requests was possible, even if only by reference to discussions on other requests (see R 6/11), such a procedure was unobjectionable and the board had no particular duty to give reasons why it chose to proceed as it did.

In T 1439/05 the board held that to avoid misunderstanding, the examining division should clarify the status of the requests before pronouncing its decision at the conclusion of oral proceedings. In T 883/07 the board held that in accordance with generally recognised procedural requirements, albeit not codified specifically in the EPC, once a higher order request was refused that request was off the table and the next request in the order chosen by the requester had to be considered as if it were the sole request.

In T 412/12, after its fourth auxiliary request had been debated, deliberated on and then found allowable, the patent proprietor, asserting that it had been taken by surprise by the board's finding earlier in the oral proceedings that claim 1 of its main request and first to third auxiliary requests was not allowable, filed an "auxiliary request 0" and asked that it be treated as ranking below its main request but above its first auxiliary request. The board regarded the proprietor's approach as an attempt to reopen the already closed discussion with a view to improving on the position it had obtained when its fourth auxiliary request had been allowed. That had to be considered unfair towards the other parties, especially as the supporting line of argument, unlike the proprietor's previous submissions, had not been developed until during the oral proceedings. The board refused to admit the new auxiliary request.

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