4.4.5 Discretion under Article 13(1) RPBA 2020 – new requests
In T 851/18 of 10 January 2020 date: 2020-01-10 (in which Art. 13(1) RPBA 2020 and Art. 13 RPBA 2007, but not Art. 13(2) RPBA 2020, were applicable under Art. 25(1) and (3) RPBA 2020), the auxiliary request filed at the oral proceedings before the board differed from the claims with which the patent had been maintained by the opposition division in two respects. First, its claim 1 combined the subject-matter of claims 1 and 3 as maintained, an amendment already made in the auxiliary request filed in reply to the communication under Art. 15(1) RPBA 2007. Second, the subject-matter of claim 3 had also been included in the second independent claim 7 for the first time. The board considered that these two amendments were relatively straightforward, did not give rise to any new issues and were appropriate and so, despite the late stage reached in the proceedings, saw no reason not to admit the auxiliary request filed at the oral proceedings and the related arguments. The inclusion of the features of claim 3 as maintained in claim 1 amounted, in essence, to a deletion of the broader claim 1 as maintained and answered all the objections in a procedurally efficient way, while claim 3 as maintained had not been contested in the proceedings up to that point. The second amendment obviously overcame a novelty objection the board had raised to claim 7.
In ex parte case T 278/17 the amendments in the (sole) claim of the main request were a reaction to issues raised by the board for the first time during a telephone conversation with regard to auxiliary request 2. Auxiliary request 2 had in turn been a serious attempt to overcome all of the issues raised – mainly for the first time – in the communication under Art. 15(1) RPBA 2007. Since the amendments were directed to and clearly overcame all of the objections raised in the telephone conversation and the communication under Art. 15(1) RPBA 2007, the board admitted the new main request, having regard to Art. 13(1) RPBA 2020 and Art. 13(1) and (3) RPBA 2007.
In T 131/18 the board first of all assessed whether, hypothetically, it would have admitted auxiliary request 3 filed in response to the reply, because, apart from two amendments, its wording and content were identical to the new auxiliary request 6 now at issue. It considered auxiliary request 3 admissible for the following reasons: the main request the appellant had filed with its grounds of appeal had been a first attempt to remedy the infringement of Art. 123(2) EPC established in the contested decision and, as it had demonstrated, the further minor amendments made in auxiliary request 3 had simply been its response to the additional objections to that main request raised in the reply under Art. 123(2) EPC, Art. 83 EPC and Art. 84 EPC. Moreover, auxiliary request 3 had not been filed so late that the respondent (opponent) had no longer been able to react. The board found that the amendments made overcame the existing problems without giving rise to any new ones and so concluded that it would have exercised its discretion under Art. 13(1) RPBA 2020 to admit auxiliary request 3. The editorial adjustments to that request which had been made in auxiliary request 6 in order to remove inconsistencies were also admitted under Art. 13(2) RPBA 2020 (see under chapter V.A.4.5.5h)).
For further inter partes cases where the boards admitted new requests which were filed in good time and prima facie allowable, see e.g. T 32/16 (see abstract in chapter V.A.4.4.5c) below), T 2101/16 (legitimate reaction to clarification of Art. 83 EPC objection raised in statement of grounds of opposition), T 102/16 (inventive-step objection raised for the first time in the board's preliminary opinion, essentially a combination of two claims of the patent as granted, no need to adjourn), T 731/16 (new request filed two days before oral proceedings, only difference from claim version as maintained "bzw." instead of "oder"; legitimate reaction to new interpretation in communication under Art. 15(1) RPBA 2007).
For a further ex parte case, see T 2129/16 (request clearly overcame the clarity objection raised for the first time in the board's preliminary opinion).
On a party's duty to provide reasons for not amending its case at an earlier stage in the proceedings (Art. 13(1), third sentence, RPBA 2020), see also chapter V.A.4.4.4b).