T 0151/21 - Never amend claims before the Examining Division?

Key points

• In this appeal against a refusal decision, the Board does not admit a set of claims corresponding to a set of claims presented before the Examining Division but subsequently amended.
• "The board notes that it was the appellant's deliberate decision to respond to the inventive-step objection raised against the set of claims filed on 17 January 2017 by replacing them with a set of claims of narrower scope instead of maintaining them as a main request and filing an auxiliary request. The board fails to see what would be problematic or unsatisfactory about an appellant maintaining, instead of withdrawing, a request which it considers to be allowable. The primary purpose of the appeal proceedings is to review the decision under appeal, not to give the appellant the opportunity to reconsider procedural decisions made earlier."
• I wonder if this decision suggests that applicants should never amend the claims before the Examining Division, instead filing only (more and more) auxiliary requests. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t210151eu1.html

Main request

3. Admission into the appeal proceedings

3.1 The main request corresponds to the set of claims filed with the letter of 17 January 2017. These claims were replaced with an amended set of claims filed with the letter of 23 January 2018.

3.2 Since the main request is not one of the requests on which the decision under appeal is based, it represents an amendment of the appellant's case to be admitted only at the board's discretion (Article 12(2) and 12(4), first and second sentence, RPBA 2020). However, the statement of grounds of appeal did not provide reasons for filing this request in the appeal proceedings (Article 12(4), third sentence, RPBA 2020).

Moreover, requests which have not been maintained in the first-instance proceedings are not to be admitted, unless the circumstances of the appeal case justify their admittance (Article 12(6), second sentence, RPBA 2020).

3.3 In its letter of 20 March 2023, the appellant explained that the main request returned to the last claim set which had not been objected to by the examining division as extending beyond the content of the application as filed. Since the examining division had raised an inventive-step objection against that claim set and had maintained the same line of reasoning in the decision under appeal, reverting to that claim set during the first-instance proceedings would have had no chance of success. However, since the board now tended to agree that the examining division's reasoning was not fully convincing, the appellant should be allowed to pursue the broader set of claims which had not been objected to under Article 123(2) EPC.

The appellant added that if the main request were not admitted, applicants would be obliged either to file an appeal rather than continue prosecution before the examining division or to present all the rejected claim requests in the oral proceedings. Neither solution seemed satisfactory.

3.4 The board notes that it was the appellant's deliberate decision to respond to the inventive-step objection raised against the set of claims filed on 17 January 2017 by replacing them with a set of claims of narrower scope instead of maintaining them as a main request and filing an auxiliary request. The board fails to see what would be problematic or unsatisfactory about an appellant maintaining, instead of withdrawing, a request which it considers to be allowable. The primary purpose of the appeal proceedings is to review the decision under appeal, not to give the appellant the opportunity to reconsider procedural decisions made earlier.

Hence, the board does not consider that the circumstances of the appeal case justify the admittance of the main request.