4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020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 several decisions, the boards found that a new (main or auxiliary) request to be examined, filed in response to a new objection raised at the first-instance oral proceedings, need not have been submitted at those oral proceedings in the circumstances of the case in hand pursuant to Art. 12(6), second sentence, RPBA 2020.
In T 218/20 the respondent (proprietor) filed auxiliary requests 1 to 5 with its reply to the grounds of appeal. The board accepted that these requests had been filed in response to new inventive step objections first raised in the oral proceedings before the opposition division. In the board’s view, there was no need at that moment to file any further auxiliary requests as the opposition division was not convinced by these objections. Thus, the respondent had availed itself of the first opportunity to respond to these attacks. The board further held that the requests seemed to be fair and appropriate reactions and therefore justified in the sense of Art. 12(4) RPBA 2020. Similarly T 121/20. See also the decisions in this chapter V.A.4.3.7c).
In T 315/21 the board examined whether the appellant (proprietor) should have filed the amendment in question (removal of a comma from the main request, on which the impugned decision was based) already at the oral proceedings before the opposition division when the related objection of clarity was first raised. The board noted that this objection was raised together with a number of further clarity objections, some of which were also new, and held that the patentee was not in a position to find an appropriate response to this complex situation in the little time given during the oral proceedings. Nor was this a situation of its own making as it had filed what was then the main request more than one and a half years before the oral proceedings. Thus the board did not consider that the proprietor should have filed the present main request during oral proceedings before the opposition division. Since the amendment was moreover not complex, suitable to address the ambiguity in question and was not contrary to the need for procedural economy, the board decided to admit the main request into the proceedings (Art. 12(4), (6) RPBA 2020).
For a further example, see T 172/20.