Request admitted as a normal procedural development 

According to established case law, amendments, including amended requests, are usually admitted into appeal proceedings if they are justified by the normal development of the proceedings or can under the circumstances be considered a normal reaction of a losing party (T 1072/98, T 540/01, T 848/09, T 2485/11, T 618/14).

In T 848/09 the board considered the filing of the present main request to be a legitimate and normal reaction to the decision to revoke the patent, because the amendment concerned the addition of a feature of a dependent claim which further limited the subject-matter. Moreover, the request was filed at the earliest possible stage of the appeal proceedings, namely with the statement of grounds (see also T 881/09). Even if, theoretically, the patent proprietor might have been able to file this request at the end of the oral proceedings before the opposition division, the board considered the situation to be different from T 144/09, since it did not appear that the patent proprietor made a "considered and deliberate choice" not to file the request. Rather, the reasons for the revocation of the patent were not so explicitly known as in case T 144/09 and plausibly the formulation of a suitable new request overcoming the objection was not immediately evident.

In T 134/11 the board observed that the mere fact that a request could have been filed in the first-instance proceedings as such does not lead automatically to the inadmissibility of this request (as in this case there would be no discretionary power of the board). On the contrary, normally such a request is inadmissible only in exceptional circumstances. For example, such circumstances may arise where, by the filing of a request only at the appeal stage, a decision by the opposition division on certain issues is avoided and the decision is shifted to the second instance (this is referred to as "forum shopping" in decision T 1067/08). In the case at issue it was credible that it was not the appellant's intention to avoid any decision of the opposition division on the current main request. Furthermore the current main request did not raise any new issues but represented merely a continuation of the approach chosen by the appellant all through the first-instance opposition proceedings. The main request thus was admissible. Contrary to the respondent's view, this finding was not at variance with decisions T 144/09 and T 936/09. The reason for not admitting certain requests in these decisions was essentially that the proprietor had not filed any request in the first-instance opposition proceedings which could have overcome the opposition division's objection and in fact had done so only in the appeal.

In T 2485/11, the appellant had filed an amended main request and an auxiliary request during first-instance proceedings in an attempt to overcome objections of lack of novelty and inventive step raised in the notice of opposition. At the oral proceedings, the opposition division concluded that the amended requests did not comply with Art. 123(2) EPC. The appellant, unlike in T 144/09 and T 936/09, took the opportunity offered to it and filed further requests modifying the amendments in the main request, in order to overcome the opposition division's objection under Art. 123(2) EPC. The fact that, after these requests had also been considered to contravene Art. 123(2) EPC, the appellant did not file a further request could not be regarded as an abuse simply because, theoretically, it could have filed amendments. Hence, given the circumstances of the case, the appellant's submission of auxiliary requests 1 to 5 was considered to be a normal and legitimate reaction of a losing party (see also similar case T 2244/11).

In T 1226/12, when exercising its discretion, the board took into account the fact that the opposition division had made the decision under appeal without a prior communication and any oral proceedings. Even though the appellant, in its reply to the opposition, had defended its patent only as granted and had not requested any oral proceedings, it was nonetheless the case that the opposition division had not communicated its preliminary opinion to the parties. Such an opinion might have led the appellant to define other, fallback positions by way of auxiliary requests. Instead, it had been confronted for the first time in the revocation decision with the opposition division's (at that stage) final opinion on the grounds for opposition filed.

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