T 0248/22 - Pre-emptive auxiliary requests and Art. 12(4) RPBA

Key points

• This decision seems important. The proprietor submitted a new auxiliary request with the Statement of grounds. Admissibility under Art. 12(4) RPBA is to be considered.
• "When exercising its discretion whether to admit an amendment to a party's case, the board has to consider whether the amendment is suitable for addressing the objections raised (Article 12(4) RPBA). In the current case, the proprietor argued that the amendments remedied an objection which is not part of the decision under appeal [...]. Any reasons why an amendment overcomes an unraised objection do not constitute valid reasons for admitting an amended request in view of Article 12(4) RPBA, second paragraph."
• Hence, in the Statement of grounds, the proprietor does not need to file auxiliary requests to address objections that could be raised by the opponent as respondent but are not part of the impugned decision.
• The decision is, however, difficult to follow on the specific facts as the Board also states that the auxiliary request addressed an objection under Art. 123(2) that "was presented for the first time during the oral proceedings before the opposition division". The objection was, therefore, not an "unraised objection". However, it seems that according to the Board, what matters is whether the objection is in the appealed decision.
• If the opponent as respondent introduces (or reintroduces) the objection in the reply to the appeal, the proprietor should file a rejoinder to address it with an appropriate auxiliary request. 

EPO 

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

8. Auxiliary requests 6 to 10

8.1 The board asserts that these are amended requests filed for the first time with the grounds of appeal. These requests had not been previously presented in the proceedings. Therefore, their admission is at the discretion of the board (Article 12(4) RPBA).

8.2 The proprietor brought forward that these requests were filed in response to the opponent's objection against the "a deteriorating ballast condition" feature. As this objection pursuant to Article 123(2) EPC was presented for the first time during the oral proceedings before the opposition division, the proprietor argues that these requests could not have been submitted earlier.

8.3 When exercising its discretion whether to admit an amendment to a party's case, the board has to consider whether the amendment is suitable for addressing the objections raised (Article 12(4) RPBA). In the current case, the proprietor argued that the amendments remedied an objection which is not part of the decision under appeal or the appeal proceedings. Any reasons why an amendment overcomes an unraised objection do not constitute valid reasons for admitting an amended request in view of Article 12(4) RPBA, second paragraph.

8.4 Consequently, in the absence of any valid reasons for admitting auxiliary requests 6 to 10, the board decides not to admit them into these proceedings.

9. Hence, none of the proprietor's requests is admissible and allowable.