c) Auxiliary request issues 

Where it is not clear which higher request the applicant wishes to pursue, the examining division must request that the applicant clarify this in resumed examination proceedings. (Guidelines C‑V, 4.9 – March 2022 version).

In T 1255/04 (OJ 2005, 424) the board held that in a case where a request was considered allowable on which a R. 51(4) EPC 1973 (now R. 71(3) EPC) communication was to be sent, but where higher-ranking requests were not allowed, the communication under R. 51(4) EPC 1973 would be deficient if it was not accompanied by reasons why the higher-ranking requests were not allowed. This communication should also expressly mention the option of maintaining the disallowed requests, thus reminding the applicant and the examining division of the possibility for the applicant of asking for a written appealable decision on these higher-ranking requests (T 1181/04, OJ 2005, 312, followed). It pointed out that if the applicant maintained a still pending higher-ranking request discussed at the oral proceedings before the examining division, that request could not be refused under R. 86(3) EPC 1973. R. 86(3) EPC 1973 could not be used to deprive an applicant from obtaining a decision giving the substantive reasons for refusal of a request already considered in substance during the proceedings. A decision merely stating that the application was refused because there was no version approved of by the applicant within the meaning of Art. 113(2) EPC 1973 on which a patent could be granted, was inadequately reasoned because it did not give the substantive reasons why what the applicant did not approve of was not in conformity with the patentability requirements of the EPC.

In T 169/96 the board held that according to Art. 113(2) EPC 1973, the EPO was bound to the requests of the applicant or proprietor. In case of main and auxiliary requests, this meant that the EPO was also bound to the order of the requests. Before a decision could be taken on the basis of an auxiliary request, the main request had to be examined and decided upon (see also T 484/88). In the case in hand the applicants were only invited to indicate their approval of the text according to auxiliary request III. Therefore, their express disapproval related necessarily only to this version of the application. Hence, auxiliary requests I and II were pending when the decision under appeal was taken and the failure to give a decision on these requests was a violation of Art. 113(2) EPC 1973. The failure to deal with the requests preceding auxiliary request III violated also R. 68(2) EPC 1973. If a decision related to several requests, it had to give reasons for the rejection of each one (see T 234/86). The fact that the first examiner had expressed a preliminary view in a previous communication which might be applicable to these requests could not replace reasons in the decision itself. It had to be clear from the decision which considerations led the division to its conclusions (T 234/86, see also T 1439/05).

In T 255/05 the board observed that the appellant's "auxiliary request" was not one single request but encompassed numerous requests. It was totally undefined in which order these four requests and any such combination requests should be considered by the board. The board noted that according to Art. 113(2) EPC 1973, the EPO should consider or decide upon the European patent application only in the text submitted to it, or agreed, by the applicant. It was therefore the applicant's responsibility to define the text on the basis of which it requested a patent to be granted. In the case of auxiliary requests this included the requirement that the applicant had also to indicate the order in which the requests were to be examined. As a consequence, when the appellant, even after having been invited to do so by the board, did not clearly indicate the order in which its several requests were submitted and what the exact content of each of these requests was, there was no text submitted or agreed by the applicant within the meaning of Art. 113(2) EPC 1973 and no request which could be considered by the board. Therefore, the appellant's "auxiliary request" had to be disregarded.

In T 888/07 the board held that if the examining division refused to consent to the latest submitted set of amended claims, put forward to substitute the claims previously on file under R. 86(3) EPC 1973, the previous set of claims that the examining division had consented to consider but which the applicant had not maintained as an auxiliary request was not automatically revived. It noted that in accordance with Art. 113(2) EPC and established case law (see e.g. T 237/96) a decision could not be based on the previous set of claims. Art. 113(2) EPC 1973 stated that the EPO had to consider and decide upon the European application or patent only in the text submitted to it, or agreed to, by the applicant or proprietor. Deciding to refuse an application on the grounds that the claims previously on file were not allowable would have contravened Art. 113(2) EPC 1973, since these claims were no longer pending.