e) Requests which could have been presented at first instance 

According to established case law it is clear from the wording of Art. 12(4) RPBA 2007 that the board in inter partes proceedings has discretion over whether or not to admit requests which could have been presented by the patent proprietor in first-instance proceedings, but were not. The precondition of whether the request at issue could have been presented in the first-instance proceedings relates to the question of whether the presenting party could have been expected to present its request in the first-instance proceedings in the circumstances of the specific case (T 1538/10).

In T 240/04, the board refused to consider the third auxiliary request because the appellant could have submitted it before the opposition division. Indeed, it even ought to have done so because the amended independent claim concerned a technical problem which was only remotely related to the original one and presented facts not previously examined. To admit a new request in those circumstances would practically give patentees the opportunity to compel a remittal to the department of first instance as they pleased, which would not only put the opponent at a disadvantage but would also run counter to the principle of procedural economy.

In T 339/06, the board held that the admissibility of a request first submitted in appeal proceedings and relating solely to an independent claim which, although within the scope of the opposition, had not been considered in the first-instance decision had to be decided on in the light of whether it could also have been submitted earlier. In exercising its discretion not to admit the auxiliary requests at issue in this case, the board considered, in particular, that it would have to rule on a completely different case if they were introduced on appeal (see also similar case T 38/13).

In T 1705/07 the appellant for the first time in the appeal proceedings submitted requests which no longer contained the process claims on which the contested decision was based, but which now only comprised product and use claims which related to fundamentally different subject-matter. Consequently, admitting them into the proceedings would mean that the matters in dispute were fundamentally different from both a substantive and a patent-law point of view, so that the upshot would normally be a remittal to the department of first instance. As a result, the proceedings would last longer and the public would be deprived of legal certainty regarding the validity of the contested patent, which would not be compatible with the principle of procedural economy.

In T 144/09, about one month before oral proceedings in opposition proceedings the patent proprietor added a new feature into the requests. During the oral proceedings the opposition division raised an objection under Art. 123(2) EPC concerning the inclusion of this feature. The patent proprietor did not file any amended or auxiliary requests. Thus, the patent was revoked. With the statement of grounds of appeal the patent proprietor filed new requests without feature in question. The board stated that a request can be held inadmissible under Art. 12(4) RPBA 2007 when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (see also R 11/11 regarding the appellant's petition for review on this matter; see also T 154/12). In T 848/09 (see chapter V.A.5.11.3g) below) the board distinguished the case before it from T 144/09.

In T 1125/10 the appellant had not reacted to the obviously relevant documents filed shortly before the oral proceedings (before the opposition division) or attended those proceedings. The board considered that the only reason it was now compelled to decide on the matter at first and final instance or else remit the case to the department of first instance was that the appellant's conduct had prevented the opposition division from taking a reasoned decision on the subject-matter of claims amended in the light of those documents. The board therefore decided not to admit the appellant's new requests into the proceedings (citing T 1067/08) See also T 2154/13, which likewise concerned non-attendance at oral proceedings.

In T 936/09 the board stated that under the EPC, there is no legal obligation for the patent proprietor to take an active part in opposition proceedings. However, the patent proprietor is not free to present or complete his case at any time that he wishes during the opposition or opposition appeal proceedings. If a patent proprietor chooses not to respond in substance at all to the opposition or chooses not to complete his submissions at the stage of the first-instance proceedings, but rather presents or completes his case only in the notice of appeal or the statement setting out the grounds of appeal, then he will need to face the prospect of being held to account for such conduct by the board when, for example, exercising its discretion under Art. 12(4) RPBA 2007. See also T 1335/14, T 1400/11, T 2066/18.

In T 23/10 the board stated that a patentee withholding claim requests in opposition proceedings is precluded from having those requests admitted on appeal, since the patentee would otherwise be permitted to disadvantage the adverse parties by conducting appeal proceedings contrary to its actions before the opposition division (endorsed in R 13/11). See also T 1165/10 (deliberately foregoing opportunity to file new requests and subsequently attempting to reopen the opposition proceedings before the board held to be an abuse of procedure) and T 872/09 (deliberate choice not to defend auxiliary requests).

In T 1467/13, in the opposition proceedings the patent proprietor had sought maintenance on the basis of new requests that were now, on appeal, its main and first to eighth auxiliary requests. In its ninth to thirteenth auxiliary requests, filed with its statement of grounds of appeal, a feature had been deleted. Their subject-matter was thus, with no apparent justification, outside the scope of the proceedings as defined at first instance. Based on Art. 12(4) RPBA 2007, it therefore should have been filed in the first-instance proceedings.

In T 101/17 the novelty objection to be overcome by the auxiliary requests had been in the proceedings already since the filing of the opposition; its framework of facts and arguments had remained unchanged throughout the opposition proceedings. Nonetheless the appellant had restricted its case to defending the patent as granted. The board noted that for reasons of equity in appeal he was restricted to defending the patent in unamended form.

In T 2558/16 the request reverting to the claims as granted which had been filed at the outset of the appeal proceedings could already have been filed in the proceedings at first instance, and so the board had discretion not to admit it. Nevertheless, in exercising this discretion under Art. 12(4) RPBA 2007, account had to be taken of the specific circumstances of the individual case (see T 28/10) and, here, especially of events during the opposition proceedings. The board considered, in particular, that the request was a promising attempt to overcome all the opposition division's objections to the request dealt with in the contested decision. On the topic of "Reverting to broader claims, especially those as granted", see also chapter V.A.5.12.14.

In T 2455/18 a large number of new requests were filed with the statement of grounds of appeal. Some of these requests could be seen as a reasonable response to the first-instance decision, while for others this seemed questionable. The board considered the criterion of procedural economy and efficiency when exercising its discretion under Art. 12(4) RPBA 2007 and explained that, in a case such as this one, it could be easier to admit all requests, instead of giving reasons for each individual request why it was or was not to be admitted.