e) Suitability to address the issues leading to the decision under appeal 

(i) Suitability of claim amendments

In T 1655/20 (ex parte) the first auxiliary request, which was filed for the first time with the statement of the grounds of appeal, was an amendment to the party's case which could be admitted only at the discretion of the board (Art. 12(2) and (4) RPBA 2020). The board considered that the amendment (deletion of "particularly", thereby rendering a feature mandatory) resulted in a further limitation of the claim in a genuine attempt by the appellant (applicant) to respond to the objection of lack of novelty raised by the examining division in the decision under appeal. Furthermore, this amendment did not lead to any complex subject-matter and did not appear to introduce further issues which would negatively impact on procedural economy. In view of these reasons the board admitted the first auxiliary request into the appeal proceedings.

In T 714/20 (ex parte) the board admitted the first auxiliary request filed with the grounds of appeal, which corresponded to the main request on which the decision under appeal was based with a further amendment to remedy a clarity objection noted in this decision. This amendment used wording employed by the examining division itself when construing the claim. The board therefore considered this to be an appropriate response to the grounds for refusal and admitted the request into the appeal proceedings (Art. 12(4) RPBA 2020).

For further examples in which the amendment was considered suitable to address the issues leading to the decision under appeal and admitted into the proceedings, see T 1617/20 (amendment to the description), T 3038/19 (limitation to a single specific composition).

By contrast, suitability for addressing the issues raised in the first-instance proceedings was denied in the following cases.

In T 1421/20 (ex parte) the board held that, while the amendments carried out in the auxiliary requests at issue may have addressed the objection of lack of clarity raised in the impugned decision, they did not address another objection equally raised by the examining division. The board decided not to admit these requests into the proceedings.

In T 1897/20 (ex parte) claim 1 of the main request submitted with the statement of grounds of appeal had been amended by omitting certain features, inter alia one which the appellant considered to be well-known in the relevant prior art and thus not necessary to delimit the claims over the prior art. The board pointed out that the omission of features that were known from the prior art was typically not suitable to overcome objections concerning inventive step. Furthermore, the board held that admitting these requests would be contrary to the requirement of procedural economy.

In T 726/20 the board held that the amendment made in claim 1 of auxiliary request 1 was prima facie not supported by the teaching of the application as originally filed. Therefore, in exercise of its discretion under Art. 12(4) RPBA, the board did not admit auxiliary request 1.

(ii) Suitability of a new defence or supporting evidence

In J 3/20 the appellant invoked the principle of protection of legitimate expectations for the first time during oral proceedings before the Legal Board of Appeal and alleged that it had trusted the content of a communication in a parallel case. The Legal Board of Appeal saw no reasons that could justify why the appellant had presented the new defence and the underlying facts for the first time at such a late stage of the proceedings, thereby counteracting principles of procedural economy. Moreover, the objection did not seem to be suited to address the issues which led to the decision under appeal as it would have introduced a completely new aspect on which the assessment and the reasoning in the appealed decision were not focused.

For a decision in which the board admitted new evidence supporting the proprietor’s defence, see e.g. T 1720/20. In this case the opposition division had concluded that the priority document and the PCT application from which the contested patent derived were filed by different legal entities. The board admitted documents D14 and D15 (bibliographic data and translation), as they were considered suitable for addressing the issue of the identity of the applicant. A further example is T 415/20.