4.3.4 Discretion under Article 12(4) RPBA 2020
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In T 1897/20 (ex parte) the board noted with regard to the main request and auxiliary request I that the omission of features that were known from the prior art was typically not suitable to overcome objections concerning inventive step. It also considered that admitting these requests would be contrary to the requirement of procedural economy, as it would possibly make it necessary to remit the case for further examination. See also T 1780/20, concerning an amendment of independent claims by introducing features from the description.
In T 1785/20 (ex parte) the board noted, regarding procedural economy, that the amendments introduced a number of new potential deficiencies (namely issues of claim construction which prima facie suggested a lack of clarity) which would have to be addressed if the amendments were admitted.
For a further decision in which the board did not admit the relevant request as it was contrary to the requirement of procedural economy, see e.g. T 1161/20. For an example where admitting new attacks based on different closest prior art would have been against procedural economy, see T 526/21.
Counter-examples where the new requests did fulfil the needs of procedural economy can be found in T 121/20 and T 3240/19. In both cases auxiliary requests were filed at the first opportunity, the amendments in question clearly addressed the objections and they did not give rise to further issues. See also T 869/20 (inter partes, straightforward clarity objections).
In T 1657/20, the board admitted citation A8 into the appeal proceedings primarily because it was suitable for addressing the issues that had led to the contested decision. In other words, as set out by the board, the citation was prima facie relevant despite the opposition division's finding to the contrary. However, the board also considered the fact that the two other criteria specified in Art. 12(4), last sentence, RPBA 2020 did not prevent the citation being admitted. Moreover, in the circumstances, the board did not consider it to be an appropriate solution to defer the assessment of A8 until any subsequent national revocation proceedings, despite Art. 12(4) RPBA 2020 not actually directly governing this aspect of inter-institution procedural economy. Since the list in said paragraph is not exhaustive, this aspect was taken into account, albeit with less importance than the other criteria.