4.2.2 Second and third levels of the convergent approach: amendments to an appeal case within the meaning of Article 13(1) and (2) RPBA 2020
Since a withdrawn request ceases to be at issue in the proceedings, its admission (consideration) if it is resubmitted at a later stage is subject to the same procedural requirements as apply to a brand new one (T 2692/18, referring to T 1695/14 and T 1421/20). In the case to be decided in T 2692/18, this meant that Art. 13(2) RPBA 2020 had to be applied because the request originally filed in response to the reply had been replaced by other requests following the communication under Art. 15(1) RPBA 2020 and had not then been resubmitted until the oral proceedings.
In T 1421/20 auxiliary requests 1 to 5 had been considered in the decision under appeal, but the board noted that they had been replaced (i.e. withdrawn) at the beginning of the appeal and were thus not part of the appellant's (applicant's) appeal case. The board thus regarded their reintroduction (after notification of the summons to oral proceedings) as an amendment to the appellant's case, the admission of which was subject to its discretion (Art. 13 RPBA 2020). See also T 798/18.
- T 2124/21
Abstract
In T 2124/21 the appellant (applicant) had filed with the statement of grounds of appeal a main request and a first auxiliary request that superseded the sole request subject of the appealed decision. In its communication under Art. 15(1) RPBA, the board informed the appellant of its preliminary intention not to admit these requests, inter alia because no reason had been given why these amendments were filed only on appeal, and because prima facie they contained added subject-matter. In its written reply the appellant withdrew the main request and the first auxiliary request and requested, by reference, the grant of a patent based on the claims of the request subject of the appealed decision.
The board first explained that it was with the main request and first auxiliary request that the resubmitted sole request subject of the appealed decision had to be compared when establishing whether it was an "amendment" to the appeal case. Since the sole request had been abandoned by the statement of grounds of appeal it was not pending anymore when resubmitted. Therefore, it could not be the object of comparison for the purposes of Art. 13(2) RPBA. The board then pointed out that, since claim 1 of each of the main request and the first auxiliary request had an additional feature compared with claim 1 of the sole request subject of the appealed decision, the resubmitted request constituted an amendment to the appeal case within the meaning of Art. 13(2) RPBA.
Regarding the question whether there were exceptional circumstances justified by cogent reasons, the board, citing Art. 12(2) and (3) RPBA, explained that the appellant had made a choice, at the outset of appeal proceedings, not to seek a review of the appealed decision and thereby prevented the board from pursuing the primary object of the appeal proceedings (cf. Art. 12(1)(a) and (b) and (2) RPBA). In the board's view, it could not be expected to begin the judicial review of the appealed decision only at the last stage of the appeal proceedings.
Moreover, the board held that the fact that the amendment in question did not imply a substantial technical change of the claimed subject-matter, was not a circumstance that justified admittance of the sole request. Rather, the only exceptional aspect of the case was the appellant's own choice to avoid the board's review of the appealed decision until the last stage of the appeal proceedings. The objection raised in the preliminary opinion against the then freshly filed main request and first auxiliary request was not an exceptional circumstance.
Since there was no admitted request on file the appeal was dismissed.