4.5.1 Late-filed requests
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According to an approach frequently adopted by the boards a request after arrangement of the oral proceedings may be admitted and considered at the board's discretion (i) if sound reasons exist for filing this request so far into the proceedings (this may be the case when amendments are occasioned by developments during the proceedings), (ii) if the auxiliary request does not extend the scope of discussion as determined by the grounds of appeal and the respondent's reply (iii) if the auxiliary request is clearly or obviously allowable (this means that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully address the issue raised without giving rise to new ones) (see in particular T 1634/09, T 484/07, T 447/09, T 2344/09, T 1925/10, T 416/12, T 1605/14 and T 385/15). Such amendments should in principle allow the granting of a patent based thereon (T 1748/08, T 2250/08).
In T 81/03, the board found that requests filed shortly before the minimum deadline set by it in the summons to the oral proceedings had to be regarded as belated where they contained points which could only be dealt with properly in an additional written phase (T 518/08).
In T 253/06, the board held that it was permissible under Art. 13(3) RPBA 2007 to regard as belated auxiliary requests filed after oral proceedings had been arranged but within the prescribed period, if those requests were not substantiated, i.e. not accompanied by reasons explaining why the amendments had been made and how they were intended to overcome the objections raised in the course of the proceedings (T 2422/09, T 351/10, T 2497/10). This conclusion holds all the more true, if such an unsubstantiated request is filed only shortly before the oral proceedings. In this respect an ex-parte is not different from an inter-partes case (T 1278/10).
Amended claims filed at such a late stage should be clearly allowable in the sense that it can be quickly ascertained that they overcome all outstanding issues without raising new ones (T 1126/97,T 1993/07, T 183/09).
Similarly, in T 1443/05, the board refused to admit the auxiliary request under Art. 13(3) RPBA 2007 because, as a result of its late filing, the question whether it met the requirements of Art. 123(3) EPC 1973 could not be answered without adjourning the oral proceedings (see also T 1026/03, T 1305/05, T 455/06).
- T 2271/18
A clear and detailed preliminary opinion provided by a board - rather than merely "drawing attention to matters that seem to be of particular significance for the decision to be taken" (cf. Article 15(1), fourth sentence, RPBA 2020) - is predominantly intended to give the party(ies) an opportunity to thoroughly prepare their arguments in response to it but not to file new submissions, such as new sets of claims, and to thereby arguably shift the focus regarding the issues on file to be decided in appeal proceedings. In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see point 3.3 of the Reasons).
- T 2486/16
1. In applying Article 13(2) RPBA 2020 the Board may also rely on the criteria set out in Article 13(1) RPBA 2020 ... . The criteria of Article 13(1) RPBA 2020 may therefore supplement, but do not supplant, the separate requirements of Article 13(2) RPBA 2020 (Reasons, point 6.4.1).
2. When filing requests within the period mentioned in Article 13(2) RPBA 2020, the party, in providing its "cogent reasons", should not only identify the circumstances invoked and explain why they are to be regarded as "exceptional", it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage. (Reasons, point 6.5.6). 3. The mere fact that, in a communication under Article 15(1) RPBA 2020, the Board departs in some respects from the reasoning of the Examining Division on inventive step (while reaching the same conclusion) does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, nor does it open the door to the filing of new requests as a response (Reasons, point 6.6.3).
- T 950/16
see reasons 3.2
- T 752/16
Eine Änderung der vorläufigen Meinung der Kammer zu einem bestimmten Einspruchsgrund stellt keinen "außergewöhnlichen Umstand" im Sinne von Artikel 13(2) VOBK 2020 dar (siehe Punkt 3 der Entscheidungsgründe).
- T 2214/15
If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.