d) Board's communication confirming the opposition division's or opponent's opinion – not a justification 

In the cases reported below, the boards, based on the transitional provisions, applied Art. 13(1) RPBA 2020 (and Art. 13 RPBA 2007) – instead of Art. 13(2) RPBA 2020 – even though the requests at issue had been filed at the last stage of the proceedings (i.e. after the summons to oral proceedings).

In T 136/16 the board considered the criteria under Art. 13(1) RPBA 2020 and exercised its discretion not to admit auxiliary request 1, which had been filed after the summons to oral proceedings. It found, first, that the amendment made in auxiliary request 1 prima facie led to a new objection under Art. 84 EPC and, second, that this amendment could and should have been made at an earlier stage in the appeal proceedings. Indeed, in the contested decision the opposition division had already pointed out the fundamental importance of the interpretation of a disputed term in the claim. The opposition division had construed this term narrowly in the light of paragraph 7 of the description, but in its statement of grounds the appellant (opponent) had submitted detailed arguments contradicting this narrow interpretation on the basis of other passages of the description. Since the amendment had been made in view of an issue of fact that had already been discussed extensively, the respondent (patent proprietor) had already had cause to make it together with its reply. Its argument that the large number of attacks put forward prevented it from formulating meaningful auxiliary requests until it had the board's preliminary opinion did not convince the board either, given the fundamental importance of the interpretation of the term at issue in almost all the objections raised. In addition, given the circumstances of the case, the board deemed it detrimental to procedural economy to wait until that stage of the appeal proceedings to file auxiliary requests containing such an amendment.

In T 1004/18 the board found that it had already been foreseeable for the respondent (patent proprietor) on the basis of the grounds of appeal that it would take the same line as either the opposition division or the appellant and that, accordingly, it should already have come up with auxiliary requests as a fallback position in its reply to the grounds of appeal.

The board in T 700/15 similarly held that a communication from the board which merely summarised and reiterated the interpretation already reached by the opposition division in the contested decision and advocated by the opponent and did not include any new aspects or arguments or raise any new objection could not be taken as justification for filing new auxiliary requests that could have been filed earlier (referring to Case Law of the Boards of Appeal, 9th ed. 2019, V.A.4.7).

For a further case in which an objection had been on file since the filing of the grounds of appeal and new requests in reaction to a statement of the board reiterating this objection were not admitted under Art. 13(1) RPBA 2020, see e.g. T 1170/16.