c) New request addressing objection that was dismissed or not considered critical by the opposition division 

In T 290/20 the appellant (patent proprietor) filed a new auxiliary request 5 in reply to the opponent’s grounds of appeal, as an attempt to overcome inventive step objections based on a document, which had not been admitted by the opposition division but for which admittance had been requested again in appeal. The board pointed out that there had been no reason for the proprietor to file a corresponding request before the opposition division or with its statement of grounds of appeal. Overcoming any objection based on this document only became necessary when it was re-filed by the opponent with its statement of grounds of appeal.

Similarly in T 3240/19 the board held that there was no requirement for the respondent (proprietor) to file, during the first instance oral proceedings, any requests overcoming the new objection under Art. 123(2) EPC, raised on the final date in accordance with R. 116 EPC, as the opposition division considered that this objection did not prejudice maintenance of the patent in amended form according to the main request. The objection was then maintained in the statement of grounds of appeal. The board held that the first auxiliary request, which was filed with the respondent’s reply to the grounds of appeal and addressed this objection, was filed at the first opportunity. See also T 218/20 (summarised above).

In T 141/20, the board pointed out that it was insufficient under Art. 12(6) RPBA 2020 that the requests could have been filed in the opposition proceedings; that requests “should have been submitted” required that there were reasons for doing so. However, the board could not discern any such reason since the opposition division had made it clear during the proceedings that it did not agree with the opponent's objection. The board explained that the objection simply being part of the proceedings did not suffice as such a reason. In the opposition proceedings, the patent proprietor could not be expected to counter essentially any objection raised, and any permutation of an objection, by filing auxiliary requests. This would constitute an undue burden for both the opposition division and the other parties. The board's decision to admit had to take account of whether there was a need for the request to be filed in the opposition proceedings.

In T 938/20 the appellant's (proprietor's) new main request, filed as auxiliary request 105 shortly before the notification of the summons to oral proceedings before the board, was considered a fair reaction to opponent 2's objection raised under Art. 83 EPC in its reply to the appeal. This objection had been raised already in its notice of opposition, but had apparently not been discussed during the oral proceedings before the opposition division (although it would have equally applied to a request then at issue). The board took into account the high number of objections raised by the opponents in opposition proceedings and that there was apparently no clear indication that such a request should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently had not considered this objection critical for the requirements of Art. 83 EPC. Therefore there was no reason not to admit it when considering Art. 12(6) RPBA 2020.