It was already apparent from the boards' early decisions that late-filed claims that might have required an additional search would not be admitted into the proceedings. In T 14/02, intended requests as suggested by the respondent in the oral proceedings would not just have involved a minor change in the wording of claim 1 but rather major limitations of the claim which in all likelihood would have required a new search by the appellant and could have caused a remittal to the first instance (see also T 51/90, T 270/90, OJ 1993, 725; T 25/91). In T 48/91, the board refused the amended claims as inadmissible because they contained additional features the impact of which was either unclear or impossible to assess without further investigations such as carrying out proper comparison tests (see also T 234/92, in which a feature from the description was introduced to claim 1, so that an additional search might have been required, and T 1105/98, in which an additional search was needed).

In T 870/07, the board admitted the main request filed during the oral proceedings as it was in no doubt that the additionally claimed subject‑matter had also been searched. The situation was not new in the sense that the board was faced with an incomplete search preventing it from examining the claimed subject-matter.

Quick Navigation