b)
Requests not submitted in examination proceedings 

In T 1178/08 the board pointed out that a board in an ex parte case has discretion over whether or not to admit requests which could have been presented to the first instance, but were not (Art. 12(4) RPBA 2007). It must exercise that discretion having regard to the particular circumstances of the individual case. The board considered that this view is consistent with the view taken in previous decisions in the different context of inter partes cases (see R 10/09, T 144/09 and R 11/11, which rejected the petition for review of T 144/09 as clearly unallowable, and T 1007/05). The board was aware that amended claims filed together with the statement of grounds of appeal have in many cases been admitted into appeal proceedings if they constituted a legitimate reaction to the reasoning underlying the appealed decision. Indeed, such amended claims filed with the statement of grounds of appeal may achieve the goal of "a more defined and controlled initial phase of proceedings" (see T 1007/05), in particular if they serve to avoid later amendments. But this does not mean that the board is obliged to admit amended claims solely because they were filed with the statement of grounds of appeal. In the case in hand, the applicant had been given several opportunities to file amended claims in the first-instance proceedings. No auxiliary requests were filed. By presenting its sole and amended request only in appeal proceedings the applicant was making it impossible for the board to examine the contested decision.

In T 1802/12 the applicant had been given several opportunities to file amended claims in the first-instance proceedings. The board concluded that the auxiliary request could and should have been submitted during the first-instance proceedings. Although the examining division issued only one communication pursuant to Art. 94(3) EPC, the clarity objections raised therein had been reiterated in great detail in the annex to the summons to oral proceedings. In reply to the summons to oral proceedings which had been postponed twice as requested by the appellant, the appellant reacted by not attending them. No new arguments were put forward and the application was ultimately refused by the examining division (see also similar case T 892/11).

In T 1472/08, the board concluded that the purpose of examination‑appeal proceedings could not be to completely reopen the examination proceedings by admitting claims defining features more broadly if those claims could already have been presented in those proceedings and the broader definitions were not apt to overcome the objections raised in the contested decision or by the board (see also T 2000/09 and T 1428/11).

In T 1212/08, the examining division had raised objections as to the clarity, novelty and inventive step of the claimed subject‑matter in its summons to oral proceedings, prompting the applicant to request a decision on the basis of the documents on file. Auxiliary request 2 having first been filed with the grounds of appeal, the board considered whether this new subject‑matter should be examined and decided on for the first time on appeal, or whether it should remit the case to the department of first instance for further prosecution. It found, however, that neither of these procedural options was appropriate and acceptable, taking the view that the feature derived from the description was a new aspect which had no equivalent in the original claims, while remittal of the case would make the proceedings considerably longer. It observed that these two inappropriate options would never have arisen if auxiliary request 2 had been presented on time before the examining division. The applicant ought to have had the examining division exhaustively assess and then decide on all subject‑matter for which it intended to seek protection, even if only on a subsidiary basis, especially if, as it conceded, it wished the board to rule on it (see also T 892/11).

The board in T 1108/10 endorsed T 1212/08, finding that the two inappropriate procedural options would not have arisen if the sets of claims in the auxiliary requests had been presented on time at first instance. Appeal proceedings were not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances.

In T 1768/11 the appellant should have realised that the newly raised objections by the examining division necessitated the filing of amended requests. Yet it refrained from doing so. It appeared to the board that the appellant preferred to discontinue the still-ongoing proceedings before the examining division and to prosecute its case instead directly before the board. But Art. 12(4) RPBA 2007 is intended to prevent just that. Thus, the board found that this case was one where the appellant could – and should – have presented its new requests in the first-instance proceedings, and consequently the board stated it could exercise its power under Art. 12(4) RPBA 2007 to hold them inadmissible. Nevertheless, since the requests on file presented the board with no difficulties, it decided to exercise this discretionary power in the appellant's favour and to admit them into the proceedings.

In T 1841/08 the board stated that as the auxiliary requests had not been filed before the examining division, although the examining division repeatedly pointed out deficiencies, admitting these requests into the appeal proceedings would mean that the board would have to examine them for the first time in appeal proceedings, or refer the matter back to the examining division.

In T 1569/13, T 1906/13 and T 1648/17 too, the auxiliary requests not filed until the appeal stage were not admitted.

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