e)
Broadening of claims considered by the opposition division 

The appeal proceedings do not have the purpose of starting a new examination of different subject-matter, in particular where such subject-matter involves the broadening of claims considered by an opposition division (T 144/09, T 1616/10).

In T 144/09, about one month before oral proceedings in opposition proceedings the patent proprietor added a new feature "space requirement..." into the requests. During the oral proceedings the opposition division raised an objection under Art. 123(2) EPC concerning the inclusion of this feature. It asked the patent proprietor explicitly whether it would file any request that would overcome the objection. However, it did not file any amended or auxiliary requests. Thus, the patent was revoked. With the statement of grounds of appeal the patent proprietor filed new requests without the space requirement feature. The board stated that no reason could be seen for not having simply deleted the objected feature by way of an auxiliary request during the oral proceedings before the opposition division. A request can be held inadmissible under Art. 12(4) RPBA 2007 when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (see also R 11/11 regarding the appellant's petition for review on this matter; see also T 154/12).

Also in T 1616/10 the main request and auxiliary request 1 were not admitted into the proceedings, because claim 1 was broader than all requests underlying the appealed decision and the requests could have been filed in first-instance proceedings.

In T 1964/12 in view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents, the patent proprietor had decided not to argue novelty and inventiveness of the process claims as granted and had, instead, intentionally limited their subject-matter. The board found that, by doing so, it had deliberately chosen not to obtain a decision from the opposition division on the process claims as granted. Allowing it to revert on appeal to the process claims as granted would go against the need for procedural economy. Accordingly, the board decided not to admit the main request into the proceedings.

In T 526/13 the board referred to T 1964/12, that when a patent proprietor deliberately chooses not to obtain a decision from the opposition division on a certain request, allowing them to revert on appeal to that request may go against the need for procedural economy. However, in the case at hand the board considered that the actions of the patent proprietor in first-instance did not have the effect of preventing the opposition division from deciding on the substance of the request that was filed on appeal. The first-instance decision on the auxiliary request covered all of the features of claim 1 of the new main request. Hence, allowing the appellant to introduce the new main request on appeal did not go against the need for procedural economy.

In T 1719/13 the auxiliary request corresponded to auxiliary request 1 found allowable by the opposition division, except for the addition of dependent claim 5. The board found that there was no convincing reason to admit this request into the proceedings. The board referred to the consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition was normally inadmissible under R. 80 EPC (see for instance T 993/07). By the same token, the board considered the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Art. 12(4) RPBA 2007.

In T 1467/13, in the opposition proceedings the patent proprietor had sought maintenance on the basis of new requests that were now, on appeal, its main and first to eighth auxiliary requests. Those requests had therefore defined the scope of the proceedings at first instance. In its ninth to thirteenth auxiliary requests, filed with its statement of grounds of appeal, a feature had been deleted. Their subject-matter was thus, with no apparent justification, outside the scope of the proceedings as defined at first instance. Based on Art. 12(4) RPBA 2007, it therefore should have been filed in the first-instance proceedings.

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