a) Principles 

Pursuant to the non-exhaustive list of criteria in Art. 12(4), fifth sentence, RPBA 2020, the boards are to exercise their discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.

As a further criterion, the boards have considered whether the submissions on appeal should have been filed earlier or whether – on the contrary – they were filed at the first opportunity, i.e. could be justified as a legitimate reaction to late developments in the proceedings leading to the decision under appeal. See e.g. T 121/20, T 864/20, T 3240/19 and T 3248/19, which partly refer to Art. 12(6) RPBA 2020 in this context, as well as T 73/20, which additionally refers to the requirement in Art. 12(4), third sentence, RPBA 2020, according to which the party shall inter alia provide reasons for submitting the amendments in the appeal proceedings.

Other factors taken into account by the boards when exercising their discretion include whether the party's case takes account of the primary object of the appeal proceedings to review the contested decision in a judicial manner (see e.g. T 1963/20), and whether it would seem appropriate to defer dealing with a citation until any subsequent revocation proceedings, albeit without giving this factor the same importance as the criteria in Art. 12(4) RPBA 2020 (T 1657/20).

The decisions summarised in this sub-chapter are reported under the heading of one of these criteria but their assessment was usually based on an overall consideration of several factors. See e.g. T 3240/19, T 121/20, T 1516/20, T 1617/20, T 3248/19, T 868/20, T 869/20). Another example is T 1821/20, in which the board allowed the main request on the grounds that it was a refinement of a request on which the contested decision had been based and contained additional limitations that could be deemed a reaction to that decision. Moreover, the amendment was not complex and was aimed at addressing the issues that had led to the contested decision. Since the request was clearly allowable, it also fulfilled the need for procedural economy.

Whether the boards have discretion to exclude submissions which form part of the appeal proceedings under Art. 12(2) RPBA 2020 is debatable. In many decisions the boards have considered that there is no legal basis for excluding submissions (such as prior-art documents) from the appeal proceedings which had been admitted into the proceedings by the opposition division (see e.g. T 617/16, T 2337/16, T 1654/19, T 449/21). In other decisions the boards have held that they review such discretionary decisions, albeit only in a limited way (see e.g. T 2055/20, with reference to the Case Law of the Boards of Appeal, 10th ed., 2022, V.A.3.4.1.b) and to G 7/93, OJ 1994, 775).