a) Objections raised for the first time in board's communication 

In T 1255/18 the board observed that, as was apparent from the appellant's (applicant's) submissions, the filing of the auxiliary requests concerned constituted not only a legitimate but also a timely response to the additional objection under Art. 76(1) EPC, raised by the board in the communication under Art. 15(1) RPBA 2020. The amendment introduced into these auxiliary requests did not go beyond amending the feature whose presence in the higher-ranking requests had been newly objected to by the board. The board acknowledged that there were exceptional circumstances within the meaning of Art. 13(2) RPBA 2020 which justified taking the newly submitted auxiliary requests into account.

In the ex parte case T 2351/17 the board found that there were exceptional circumstances, given that it had raised a new objection under Art. 123(2) EPC in its preliminary opinion and that the amendments were designed to overcome that objection and did not give rise to any new ones.

For further ex parte cases where the board raised an objection for the first time in its preliminary opinion and considered this (partly together with the fact that the reaction to this objection was appropriate) to be an exceptional circumstance, see e.g. T 2010/15 (new clarity objection and inventive-step objection), T 2461/16 (new clarity objection), T 1609/16 (new clarity objection), T 1870/15 (auxiliary requests aimed at overcoming new clarity objection), T 2429/17 (new objections under Art. 84 and 123(2) EPC), T 2214/15 (good faith reaction to new objections of lack of support), T 1166/18 (legitimate reaction to objections under Art. 84 and 123(2) EPC), T 428/18 (first, second and third auxiliary requests were legitimate attempts to overcome new objections under Art. 84 and 123(2) EPC, filed at earliest opportunity), T 545/18 (appropriate reaction to objection under Art. 123(2) EPC raised for the first time the communication under Art. 15(1) RPBA 2020).

In the inter partes case T 1756/16 a clarity objection to auxiliary request 1 filed with the reply was raised for the first time by the board, of its own motion, in its preliminary opinion under Art. 15(1) RPBA 2020. The respondent (patent proprietor) sought to overcome this objection at the oral proceedings by filing a "new auxiliary request 1" containing just one minor amendment (lowering of the indices for intensity features "I44" and "I45"). The board found that its objection amounted to an exceptional circumstance justifying the filing of the auxiliary request at this stage. See also T 1771/17 (objection raised in preliminary opinion of the opposition division was not reflected in the decision under appeal and thus not part of the appeal proceedings until it was mentioned in the board's preliminary opinion).

In T 1224/15 the appellant (patent proprietor) had filed a new auxiliary request 3 in response to an objection raised by the board under Art. 123(2) EPC in its preliminary opinion. The respondent (opponent) contended that this objection had already been raised in its reply to the grounds of appeal. The board, however, observed that the respondent had merely referred to its notice of opposition and had not countered the arguments on which the contested decision was based, as was required under Art. 12(2) RPBA 2007. This objection was therefore disregarded (Art. 12(4) RPBA 2007). The board thus considered the amendment made in auxiliary request 3 to be a direct response to its preliminary opinion. Since this amendment (deletion of a dependent claim) also did not give rise to any new objection or entail any change to the arguments in support of insufficient disclosure and lack of novelty, the board found the new request admissible (Art. 13(2) RPBA 2020).

For further inter partes cases where the board raised a new objection in its preliminary opinion and admitted the request filed in response, see T 1152/17 (direct reaction to new aspect regarding interpretation of claim 1) and T 2091/18.