b) Features taken from the description – Art. 13(3) RPBA 2007

In some cases, requests filed after the scheduling of oral proceedings refer to features derived solely from the description. This raises the question of whether such features were included in the original search, or whether an additional search is necessary. It cannot be automatically assumed that they were considered in the original search or that the opponent is responsible for carrying out such a search (T 1732/10, see also T 447/09, T 1273/11). In T 1650/12 and T 2482/10 the question was raised of whether it was the opponent's duty to carry out a search with regard to late-filed amendments taken from the description or whether it was a matter for the opposition division to do so in accordance with the Guidelines. According to the consistent case law of the boards of appeal, if an additional search is needed to assess the patentability of claims amended with features from the description at such a late stage that either the oral proceedings must be adjourned or the case must be remitted to the department of first instance for further prosecution, Art. 13(3) RPBA 2007 is against the admissibility of such claim requests. Remittal of the matter to the opposition division to conduct such a search would amount to the same thing as adjourning oral proceedings, and this would also be necessary if the opponent were obliged to carry out such a search (T 1273/11, T 2575/11).

In T 1741/12 the board stated that the auxiliary request could, and indeed should, have been presented before the opposition division and not for the first time in appeal proceedings, since it incorporated entirely new matter taken from the description. Thus, it was unclear whether they had been the subject of the search. As a consequence, even in the hypothetical case that the subject-matter of claim 1 was not obvious having regard to the prior art on file, the board would not be in a position to maintain the patent in amended form on the basis of this request, but would have to remit the case to the opposition division. This situation is analogous to that dealt with in decision T 881/09 where it was decided not to admit an auxiliary request which incorporated a probably unsearched feature taken from the description, using the board's discretionary power under Art. 12(4) RPBA 2007.