c) Requirement to indicate the basis for amendments to the patent application or patent in the application as filed and to provide reasons why the amendment overcomes the objections raised – Article 12(4), fourth sentence, RPBA 2020 

In T 32/16 the respondent's response to the board's preliminary opinion contained amended claim requests and a statement from where the amendment was taken. The board noted that the introduced terminology was an explicit recitation of the language used in the application as filed. Demonstration of how these amendments overcame the objection in this particular case, where the lacking features as such had at least already been identified by the appellant, was thus self-evident in the amendments made. See also T 498/21.

A counter-example is decision T 890/21, in which auxiliary request 8, submitted with the reply to the appellant’s (opponent’s) statement of grounds of appeal, was not admitted into the appeal proceedings. In this request the product claims 1 - 5 had been deleted, but the respondent’s reply did not contain any reasons why the remaining claims overcame the objections succeeding against the product claims and the board could not recognise the suitability of the amendment for addressing these objections.

Presenting the board with references to a large number of text passages with no specific explanations as to how the skilled reader would directly and unambiguously derive the claimed subject-matter from the application as filed is contrary to Art. 12(4), 4th sentence, RPBA 2020 (T 864/20).

In T 248/22 the board recalled that, in exercising its discretion under Art. 12(4) RPBA 2020, it had to consider whether the amendment was suitable for addressing the objections raised. However, in the case in hand, the proprietor had referred to an objection which was not part of the decision under appeal or the appeal proceedings. The objection had neither been admitted by the opposition division nor maintained on appeal by the opponent. The board held that a reason as to why an amendment overcame an unraised objection did not constitute a valid reason for admitting an amended request in view of Art. 12(4) RPBA 2020.