h) Primary object of the appeal proceedings to review the decision under appeal 

It is established case law, and has been explicitly confirmed in Art. 12(2) RPBA 2020, that the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. The purpose of the appeal proceedings is not to give the party adversely affected by the decision under appeal a second opportunity to put forward a new case (T 1881/19).

The appeal procedure is neither a continuation of the examination procedure nor a second, parallel procedure for the applicant to use as it sees fit (T 1120/20). This is also true for inter partes proceedings. As a result, the appellant cannot try another way of reacting to the same objection on appeal; in particular the appellant cannot submit amended auxiliary requests which were not submitted during the opposition proceedings (T 1441/21).

This principle, which is closely linked to the issue of whether the submissions concerned should have been filed earlier (see e.g. T 1456/20), has also been taken into account by the boards when exercising their discretion under Art. 12(4) RPBA 2020, as exemplified in the following paragraphs.

(i) Completely fresh case presented for the first time in the appeal proceedings

In J 3/20 the Legal Board held that presenting a completely fresh case for the first time in the appeal proceedings is tantamount to treating the appeal as a new independent proceeding rather than as a judicial review based on the facts presented in the first instance. The appellant had submitted its request for a correction of the withdrawal of Great Britain as designated state and the facts underlying this request for the first time with the grounds of appeal. Moreover the submissions implied complex legal and factual issues which were not addressed in the decision under appeal and would thus contradict procedural economy. Therefore the board used its discretion not to admit these submissions. See also T 2061/19.

(ii) Examination of subject-matter deliberately foregone

Reintroducing subject-matter the examination of which was deliberately foregone in the first-instance proceedings is at odds with the purpose of the appeal proceedings as a review instance, as stipulated in Art. 12(2) RPBA 2020. Generally, therefore, any such requests are not to be admitted under Art. 12(6), second sentence, first half-sentence, RPBA 2020 (T 1456/20).

In T 1456/20 the board held that auxiliary request 7 (which corresponded to one of the auxiliary requests filed with the reply) should already have been submitted in the opposition proceedings. The novelty objection it was designed to overcome had already been discussed at the oral proceedings before the opposition division but the patent proprietor had decided at the time to limit the claimed subject-matter in a certain way and thereby deliberately foregone an examination of subject-matter now reintroduced in auxiliary request 7. The board was not persuaded by the patent proprietor's argument that this approach could be justified by the aim of limiting the number of requests in the opposition proceedings. In the board's view, it was immaterial that the additional features were features of claims as granted.

In ex parte case T 1120/20, the applicant filed new requests with the statement of grounds of appeal on the grounds that they addressed clarity objections raised by the examining division. However, these objections had already been raised in several communications as well as in the annex to the summons to oral proceedings before the examining division. The applicant had not reacted with requests but had opted to defer the discussion until the appeal stage.

(iii) Failure to actively maintain objection at the oral proceedings

In T 526/21 inventive step attacks starting from D24 and D34 were raised by appellant 1 (opponent 1) in writing during the opposition proceedings (in reply to the preliminary opinion). But they were not actively maintained at the oral proceedings before the opposition division. According to the minutes the three opponents agreed that D9 was the closest prior art and the proprietor argued that an example of D2 would be a better closest prior art. The choice between D2 and D9 was then discussed but no other document considered. Neither were the attacks based on D24 and D34 mentioned in the decision. The board concluded that these attacks did not form part of the appeal proceedings according to Art. 12(2) RPBA 2020. In exercise of its discretion under Art. 12(4) RPBA 2020, the board decided not to admit them into the appeal proceedings, as their implicit abandonment by appellant 1 had prevented the decision from being based thereupon. In the board’s view a re-introduction of these attacks would be against the purpose of the appeal proceedings and procedural economy.

(iv) Requirement to immediately react to surprising developments

In T 655/20 the board held that the opponent should have immediately reacted to a perceived surprising development in the proceedings putting it in an allegedly unexpected and disadvantageous situation. This would have allowed the opposition division to deal with the issue and decide on any request the opponent might have considered appropriate to submit. The opponent however did not request any additional measures during oral proceedings. Reacting to a change of stance taken by the opposition division in the interpretation of a feature for the first time in the statement of grounds of appeal – here by filing two new documents and an objection based on them – was contrary to the primary object of the appeal proceedings (Art. 12(2) RPBA 2020) and contrary to procedural economy (Art. 12(4) RPBA 2020).

(v) Cases in which the primary object of the appeal proceedings was met

In T 1963/20 the board recalled that, in view of the primary object of appeal proceedings the intention was to review the correctness of the first-instance decision rather than to continue examination by other means (G 10/93, OJ 1995, 172, T 980/08, T 65/11). Whereas the main request and auxiliary requests 2 to 6 filed with the statement of grounds of appeal were not admitted into the appeal proceedings, as it was not apparent why the amendments could not have been submitted in the examination proceedings, request 7, which referred exclusively to the features encompassed by claim 9 of the request forming the basis of the impugned decision, was admitted. The restriction to this claim met the primary object of appeal proceedings, the amendments were not complex, and they clearly overcame the issues which had led to the decision under appeal.

In T 1780/20 auxiliary requests 5 and 6 were identical to auxiliary request I and II which had been discussed during the oral proceedings before the examining division and for which the examining division provided an obiter dictum in its decision (the appellant having maintained only its main request). Consequently, as pointed out by the board, the appellant did not present a fresh case with these auxiliary requests; rather, the situation did not substantially differ from that described in Art. 12(2) RPBA 2020. Therefore, the board admitted auxiliary requests 5 and 6 into the appeal proceedings.