f) Request does not prima facie overcome objection – procedural economy – not admitted 

In T 1187/15 the appellant (applicant) filed auxiliary request XI during the oral proceedings before the board. It was filed as a response to the board's conclusion, reached during the oral proceedings, that claim 1 of the requests on file did not comply with the requirements of Art. 123(2) EPC. In the exercise of its discretion under Art. 13(1) RPBA 2020 the board took into account, inter alia, whether the party had demonstrated that the amendments, prima facie, overcame the issues raised by the board and did not give rise to new objections. The board noted that this criterion was also a key one developed in the boards' case law on the exercise of their discretion under Art. 13(1) RPBA 2007 (Case Law of the Boards of Appeal, 9th ed. 2019, V.A.4.4.2). Art. 13 RPBA 2007 also applied in the case in hand (Art. 25(3) RPBA 2020). The board found that, prima facie, auxiliary request XI did not overcome the objections under Art. 123(2) EPC since the omission of certain features constituted an unallowable intermediate generalisation. In view of this and the fact that the appellant had had an opportunity to respond to the points raised by the board of its own motion, the board exercised its discretion not to admit auxiliary request XI into the proceedings. Moreover, the board rejected the appellant's request for another interruption to enable it to prepare another request to replace auxiliary request XI. It was not compatible with the principle of procedural economy that oral proceedings were conducted in such a way that the appellant was given the opportunity to repeatedly file new requests until a version of the claims was found that was acceptable to the board.

In T 1338/16 (in which, in accordance with Art. 25(3) RPBA 2020, Art. 13(2) RPBA 2020 did not yet apply to the submission filed in reply to the communication under Art. 15(1) RPBA 2007), the board considered, in view of the appellant's submissions, that the amendments made in the main request and auxiliary requests 1 to 3 were primarily directed to overcoming objections in relation to added subject-matter, clarity and support, but prima facie did not overcome its objections to patentability under Art. 54 and 56 EPC. Consequently, the board exercised its discretion under Art. 13(1) RPBA 2020 not to admit these requests into the proceedings.

In T 700/15 too, the board concluded (with regard to requests 1', 1'₀, 1'a, etc.) that the appellant (patent proprietor) had not, as required under Art. 13(1) RPBA 2020, demonstrated that the amendment in the auxiliary requests prima facie overcame the issues raised by the board. More decisions on the duty to provide reasons showing that an amendment overcomes the objections raised are reported in chapter V.A.4.4.4c) "Substantiation of amendments to patent application or patent".