b) Submissions at first instance not automatically part of appeal case 

Citing G 9/92 date: 1994-07-14 and G 4/93 (OJ 1994, 875), the board in T 1577/19 observed that any procedural requests or statements made by a party during the administrative proceedings at first instance (here the requests examined in the contested decision) had no effect in any subsequent appeal proceedings unless they had been specifically reiterated and substantiated at the outset in the notice of appeal and the statement of grounds.

In the same vein, the board in T 276/17 observed that it followed from Art. 12(3) RPBA 2020 that facts and evidence submitted in the opposition proceedings were not automatically part of the appeal case. It was not enough for the grounds of appeal (submitted here by the patent proprietor) to make a sweeping reference, without any further explanation, to the minutes of the oral proceedings and to the arguments and facts mentioned therein. The board therefore considered the facts and evidence submitted later in support of inventive step to be an amendment to the appeal case within the meaning of Art. 12(3) RPBA 2020 and disregarded them.

In T 241/18 the appellant (opponent) filed an inventive-step attack which, while having been advanced in the notice of opposition and pursued at the oral proceedings before the opposition division, had not been invoked in the statement of grounds of appeal (but, rather, only after notification of the summons to oral proceedings). Raising this objection therefore constituted an amendment to the appellant's case. Since the appellant had not shown or even argued that there were any exceptional circumstances (Art. 13(2) RPBA 2020), the board did not take the new attack into account. Similarly T 2024/16.

The board in T 1439/16 likewise did not accept the appellant's (opponent's) argument that the objection of added matter raised against a claim in opposition proceedings (which was substantially identical to claim 8, objected to at the oral proceedings before the board) was implicitly part of the appeal proceedings. The board pointed out that it was the appellant who defined the extent of the appeal and that, according to Art. 12(3) RPBA 2020, the statement of grounds of appeal had to contain a party's complete case. It had been the choice of the appellant in the case in hand to make an objection of added subject-matter only to claim 1 and not to claim 8 in its statement setting out the grounds of appeal. The board refused to admit this objection, raised for the first time at the oral proceedings, as detrimental to procedural economy and for reasons of procedural fairness.

In T 1108/16 the board held that a new line of argument not included in the statement of grounds of appeal or reply clearly had to be treated as an amendment to the appeal case, even if it had been submitted and maintained in the proceedings at first instance.