c) Substantiation of amendments to patent application or patent 

In T 667/18 the board noted that it was established case law that requests which were not properly substantiated were not admissible. In the case in hand, the claims of the new main request filed in reply to the board's preliminary opinion combined features which had never been claimed before, without any explanation. As regards inventive step, the appellant's (applicant's) submissions were restricted to an unclear reference to items in its statement setting out the grounds of appeal, which in any case related to novelty and inventive step of the then main request. For these reasons the board used its discretion under Art. 13(1) RPBA 2020 not to admit the main request.

In T 32/16, in its written response the respondent (patentee) had stated from where the amendment was taken (Art. 12(4) RPBA 2020). The board noted that the introduced terminology was an explicit recitation of the language used in the application as filed. Demonstration of how these amendments overcame the objection in this particular case, where the lacking features as such had already been identified by the appellant (opponent), was thus self-evident in the amendments made.

By contrast, the board in T 700/15 found that the appellant (patent proprietor) had not demonstrated, as required under Art. 13(1) RPBA 2020, that the amendment – namely new auxiliary requests (1', 1'₀, 1'a, etc.) – overcame, prima facie, issues raised by the board; nor was this apparent to the board from the amendment itself. It therefore refused to admit the auxiliary requests.

In T 319/18 (where it was not immediately apparent how auxiliary request 5 was directed to overcoming the inventive-step objection over document D1) the board pointed out that it was established jurisprudence of the boards that requests that were not self-explanatory became effective only on the date on which they were substantiated (with reference to T 1732/10). See also T 2457/16.