h) New request – 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 concluded 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 held that reintroducing this subject-matter was at odds with the purpose of appeal proceedings referred to in Art. 12(2) RPBA 2020. 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 T 1116/20, in the first-instance proceedings the patent proprietor had merely pursued the maintenance of the patent in its version as granted and had not requested to file a new auxiliary request until after the decision, which was to its detriment, had been pronounced. In this regard, the board noted that in the opposition proceedings there had been both a reason for preparing and submitting an auxiliary request and the possibility of doing so. The patent proprietor's conduct had ultimately prevented the opposition division from taking a decision on auxiliary requests. Yet the appellant cannot defer the matter to the department of second instance as it sees fit.

The situation was different in T 541/20, where, in reply to the summons, the proprietor had filed several auxiliary requests in which three dependent claims had been deleted, but had not maintained these auxiliary requests during oral proceedings before the opposition division. They were replaced by requests which contained the deleted claims again. The board underlined that by replacing the earlier requests the proprietor had not avoided a decision on the deleted claims. The board therefore admitted three requests filed on appeal, in which the dependent claims had once more been deleted.

In T 1404/20, the main request (patent as granted) was rejected but the patent was maintained in amended form as per auxiliary request 0, which had been submitted at the oral proceedings and ranked higher than auxiliary request 1. On appeal, the patent proprietor changed the order and ranked auxiliary request 1 above auxiliary request 0. In this regard, the board noted that the patent proprietor had selected the original order on its own initiative, which it had been entitled to do within the framework of the procedural disposition principles. The patent proprietor had known that if auxiliary request 0 were successful, no decision would have been taken on auxiliary request 1. Changing the order resulted in a new status of the requests. In the board's view, taking auxiliary request 1 into account in the appeal proceedings was subject to the provisions of Art. 12(6), second sentence, RPBA 2020. The board held that auxiliary request 1 should have been presented effectively for a decision in the opposition proceedings.

For further decisions that deal with the issue of "examination of subject-matter deliberately foregone", see e.g. T 1326/21 (summarised in chapter V.A.4.3.7f) and T 921/21.