T 1928/22 - How many auxiliary requests

Key points

• The Board admits Auxiliary Request 88 filed with the reply of the proprietor to the appeal of the opponent.
• 107 auxiliary requests were filed with that reply. The requests involve various combinations of 10 amendments. 
• Auxiliary request 88 was discussed first during the oral proceedings and was made the main request after the Board announced a positive conclusion on its admissibility and allowability.
• " In the present case, even though the specific combination of the individual amendments was not submitted before, numerous objections of added subject-matter were raised by the opponents in opposition proceedings, and for each of these objections individual amendments, representing individual fall back positions, were submitted by the patent proprietor. Under these circumstances the Board considered that the patent proprietor was justified in not filing auxiliary requests for all possible combinations of individual amendments already in opposition proceedings, and in filing the main request including a specific combination of individual amendments with the reply to the opponent 1's statement of grounds of appeal. "
• Would a more streamlined approach to filing auxiliary requests be possible in cases where a few independent amendments are offered to address independent attacks?

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221928eu1

1. Admittance of the main request

1.1 The main request was filed for the first time as auxiliary request 88 with the reply to the opponent 1's statement of grounds of appeal. The Board exercised its discretion under Article 12(4) and (6) RPBA and admitted the main request into the proceedings.

1.2 In the present case, even though the specific combination of the individual amendments was not submitted before, numerous objections of added subject-matter were raised by the opponents in opposition proceedings, and for each of these objections individual amendments, representing individual fall back positions, were submitted by the patent proprietor.

Under these circumstances the Board considered that the patent proprietor was justified in not filing auxiliary requests for all possible combinations of individual amendments already in opposition proceedings, and in filing the main request including a specific combination of individual amendments with the reply to the opponent 1's statement of grounds of appeal. This was the earliest point in time at which the patent proprietor was made aware of what objections of added subject-matter, among all that were previously raised, were maintained in appeal by the opponents. Furthermore, the main request complies with needs of procedural economy, by rendering unnecessary the discussion of several issues of added subject-matter in connection with the patent as granted. It also does not add complexity to the case as claim 1 is based on claim 1 of auxiliary request 2 as maintained by the opposition division, further restricted by feature 1.2.4.1 which was recited in granted claim 5. Also, it allows the Board to take the positive assessment of inventive step in respect of claim 1 of auxiliary request 2 by the Opposition Division as a suitable basis for reviewing the decision under appeal in that context.