In T 1004/01, the amendments to the claims related solely to a narrower definition of features and values which were so clear and straightforward that a person skilled in the art could easily understand them. It was not unusual, the board found, for several auxiliary requests to be submitted in appeal proceedings, since they were the patentee's last opportunity to have the patent maintained.

In T 1128/10, it was immediately apparent that the amendments made successfully addressed the issue raised without giving rise to new ones. Therefore, they were admitted into the proceedings.

In T 70/04, the board refused to admit an auxiliary request for maintenance of the patent in a further amended form. Although the amendment indicated was a combination of two claims, it was quite extensive and raised new issues which had not yet been considered in the opposition or appeal proceedings, mainly because of a greatly increased number of variables compared to claim 1 as maintained.

In T 708/05 the board stated that the fact that a board of appeal reverses a conclusion reached in a decision at first instance is a matter which a party must always be prepared for. In the present circumstances the introduction of a disclaimer to establish novelty at this late stage, a proposal which had previously been on the table but which had been abandoned in the meantime by the appellant, is not conduct which warrants the exercise of the board's discretion in the appellant's favour. Furthermore, the subject matter of this new request would still give rise to several objections and would therefore not amount to clearly allowable subject-matter.

In T 1650/08 the board did not consider it as a necessary prerequisite that the proposed amendments overcome all outstanding objections with certainty but that they result at least in an arguable case. The board saw no reason in admitting amendments which would result in clearly non-allowable request as this would only lead to unnecessary delays.

Quick Navigation