T 0089/23 - A sensible interpretation of Art. 13(1) RPBA

Key points

• "The board does not interpret Article 13(1) RPBA as requiring an amended claim set to overcome all objections raised by another party in the appeal proceedings. 
• Requiring that all alleged objections be addressed as a precondition for admission would unduly restrict the patent proprietor's means to defend its case, particularly in the case of a multitude of objections to different claims, the relevance or persuasiveness of which is disputed and thus open for consideration by the board. The appellant's [opponent's] interpretation would require a patent proprietor as a precaution to file permutations of claim sets which address all the objections raised by the opponents individually and in combination in order to anticipate an adverse decision on one or more or possibly all of these objections. Otherwise a patent proprietor would have to overcome all objections irrespective of their merit in order not to lose the patent. A large number of requests would certainly not be in the interests of procedural expediency, but rather burden all parties and the board. Consequently, an amendment cannot necessarily be deemed inadmissible merely because it does not address all objections raised by an opponent."
• To cite   T 855/96, "it serves to ensure legal peace [Rechtsfrieden] and the acceptance of the decisions of the Boards of Appeal ... when these decisions take into account the entire matter submitted in the appeal proceedings." (in translation). 
• Dated as that decision may be, the principle stands: the more matter is considered by the board, the more likely it is correct on the merits and the easier it is to accept (for the losing party). This desirable aim must be balanced against the length of the procedure. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230089eu1