Resubmission of requests withdrawn during examination 

In T 902/10 the board held that it is established case law that the Boards of Appeal do not admit requests that were withdrawn during first instance proceedings (T 922/08); if the board were to admit such a request, it would be contrary to the main purpose of ex parte appeal proceedings, which are primarily concerned with examining the contested decision (cf. G 10/93, OJ 1995, 172), i.e. with providing the adversely affected party (the applicant) with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (see also T 2278/08, T 1306/10, T 1311/11, T 2489/11).

In T 922/08 claim 1 of the main request filed with the statement of grounds of appeal was identical to claim 1 filed as a first auxiliary request before the examining division. During the oral proceedings before the examining division, the applicant withdrew this request of its own volition. The board stated that even if the withdrawal of the present main request during the examination procedure was not considered an abandonment of this request for subsequent appeal proceedings as argued by the appellant, the fact that the request was withdrawn in the first-instance proceedings precluded the issue of a reasoned decision on its merits by the examining division. Reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, which runs contrary to the purpose of a second-instance ruling, or to remit the case to the department of first instance, which is clearly contrary to procedural economy (see also T 1156/09, T 1231/09, T 902/10, T 184/13, T 2508/13).

In T 122/10 the auxiliary requests 2 – 4 were filed during the oral proceedings. The claimed subject-matter of the auxiliary requests was identical to the subject-matter of the requests filed with the grounds of appeal which were withdrawn by the applicant in the course of the proceedings. The board stated that although reference was made to Art. 12(4) RPBA 2007 which sets out that the board shall take into account everything presented with the grounds of appeal, and thus in this case the auxiliary requests 2 to 4 as presented during oral proceedings, such provision can only be understood to apply if such requests have not previously been withdrawn as was the case here. Once the appellant chose to withdraw its earlier filed requests, the provisions of Art. 13(1) RPBA 2007 apply since an amendment to the party's case has been made.

In T 675/13 the embodiment which claim 1 covered had already been pursued in the first-instance proceedings and was then abandoned, thus preventing that aspect of the invention from being decided on its merits by the examining division. Its reinstatement would allow a kind of inadmissible "forum shopping" (see e.g. T 2017/14). The board concluded from the foregoing that claims directed to the embodiment not only could but also should have been prosecuted in the examination proceedings, so that they would have been subject to an appealable decision.

Also in T 996/13 the reintroduction of a claim request into the appeal procedure, which had been was withdrawn at an earlier stage of the procedure was not admitted.

In T 435/11 claim 1 of the request essentially corresponded to a claim on which the examining division had expressed a negative opinion with respect to novelty and which had subsequently been withdrawn in favour of more restricted claims. The board took into account the special circumstances of the case. In the first-instance proceedings, the appellant had introduced limitations against which the examining division had raised objections under Art. 123(2) EPC, and the appellant had not been able to overcome those objections by further amendment. The appellant had thereby manoeuvred itself into a difficult position. If the appellant in these appeal proceedings was to be afforded a way out at all, it had to be allowed to revert to a claim with the offending features removed. The board therefore admitted the main request into the proceedings.

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