a) Requests which could have been presented in the examination proceedings 

Art. 123(1) EPC provides that the applicant shall be given at least one opportunity to amend the application of his own volition. R. 137(3) EPC subjects any other amendments to the examining division's consent. As made clear by R. 100(1) EPC, this provision applies analogously on appeal against examining division decisions (T 1969/08). According to Art. 12(4) RPBA 2007, the board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.

In T 1178/08 the board pointed out that a board in an ex parte case has discretion over whether or not to admit requests which could have been presented to the first instance, but were not (Art. 12(4) RPBA 2007). It must exercise that discretion having regard to the particular circumstances of the individual case. The board considered that this view is consistent with the view taken in previous decisions in the different context of inter partes cases (see R 10/09, T 144/09, R 11/11 and T 1007/05). The board was aware that amended claims filed together with the statement of grounds of appeal have in many cases been admitted into appeal proceedings if they constituted a legitimate reaction to the reasoning underlying the appealed decision. Indeed, such amended claims filed with the statement of grounds of appeal may achieve the goal of "a more defined and controlled initial phase of proceedings" (see T 1007/05). But this does not mean that the board is obliged to admit amended claims solely because they were filed with the statement of grounds of appeal. In the case in hand, the applicant had been given several opportunities to file amended claims in the first-instance proceedings. No auxiliary requests were filed. By presenting its sole and amended request only in appeal proceedings the applicant was making it impossible for the board to examine the contested decision.

In T 1802/12 the applicant had been given several opportunities to file amended claims in the first-instance proceedings. The board concluded that the auxiliary request could and should have been submitted during the first-instance proceedings. Although the examining division issued only one communication pursuant to Art. 94(3) EPC, the clarity objections raised therein had been reiterated in great detail in the annex to the summons to oral proceedings. In reply to the summons to oral proceedings which had been postponed twice as requested by the appellant, the appellant reacted by not attending them.

In T 1472/08, the board concluded that the purpose of examination-appeal proceedings could not be to completely reopen the examination proceedings by admitting claims defining features more broadly if those claims could already have been presented in those proceedings and the broader definitions were not apt to overcome the objections raised in the contested decision or by the board (see also T 2000/09 and T 1428/11).

In T 1212/08, the examining division had raised objections as to the clarity, novelty and inventive step of the claimed subject-matter in its summons to oral proceedings, prompting the applicant to request a decision on the basis of the documents on file. Auxiliary request 2 having first been filed with the grounds of appeal, the board considered whether this new subject-matter should be examined and decided on for the first time on appeal, or whether it should remit the case to the department of first instance for further prosecution. It found, however, that neither of these procedural options was appropriate and acceptable, taking the view that the feature derived from the description was a new aspect which had no equivalent in the original claims, while remittal of the case would make the proceedings considerably longer. It observed that these two inappropriate options would never have arisen if auxiliary request 2 had been presented on time before the examining division (see also T 892/11).

The board in T 1108/10 endorsed T 1212/08. Appeal proceedings were not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances. See also T 1841/08.

In T 1768/11 the appellant should have realised that the newly raised objections by the examining division necessitated the filing of amended requests. Yet it refrained from doing so. It appeared to the board that the appellant preferred to discontinue the still-ongoing proceedings before the examining division and to prosecute its case instead directly before the board. Art. 12(4) RPBA 2007 is intended to prevent just that. Nevertheless, since the requests on file presented the board with no difficulties, it decided to exercise this discretionary power in the appellant's favour and to admit them into the proceedings.

In T 1569/13, T 1906/13, T 1818/16, T 1648/17 and T 14/20 too, the auxiliary requests not filed until the appeal stage were not admitted.