Just Patent Law Blog: R 0014/25 and T 0345/24

31 August 2026

Key points

The proprietor filed a new AR-1 during the oral proceedings before the Board. The earlier filed ARs moved "one down". The TBA did not admit the newly filed AR-1 (there were no exceptional circumstances, according to the TBA). Does this course of events affect the admissibility of the lower-ranking ARs?
The TBA in case T 0345/24 held it did. "
"Such a re-ranking is ... an amendment to the proprietor's appeal case and its admittance is at the discretion of the Board. Under such circumstances the Board's discretion is to be exercised in view of inter alia procedural economy (see Article 13(1) RPBA, last sentence)."
The ARs at issue were filed with the SoG of the proprietor. The TBA decision does not indicate whether the ARs were decided on (and rejected) by the OD.
The TBA reasons that the re-ranking is a case amendment "due to the procedural effects of such a change, such as consideration of alternate subject-matter"

Given that the AR was not admitted on procedural grounds, the subject-matter of new AR-1 was not examined on the merits.
Claim 1 of new AR-1 includes a feature that was not recited in the older, lower-ranking requests. I note that new AR-1 was filed to address a successful objection of intermediate generalisation.

The Board then hold the ARs filed with the SoG inadmissible.
So, if you have a supposedly safe AR (under Art. 12(2)), it may become inadmissible by the filing of another higher-ranking AR, according to this decision.
A precedent that repeatedly shuffling the order of the requests can render the ARs inadmissible is T 0716/17. However, the present case is not about repeated reordering of requests.

Regarding the petition for review, the EBA declines to review whether the re-ranking was indeed a case amendment, and hence declines to review whether the TBA had a discretionary power to hold the AR inadmissible.
"The EBA's review is restricted to the question of whether the petitioners had an opportunity to comment on the Board's qualification of [the old ARs] as an amendment [...]. ... The EBA's review cannot lead to a substantive examination through the back door of the criticised treatment of the [...] filing of new auxiliary request 1 by the Board which lead to the [TBA's] conclusion that the reranking of [the old ARs] was an amendment to the petitioners' case."

Hence, the EBA does not review whether the reranking of the old ARs - note, this means simply inserting one higher ranking AR - is a case amendment.
Compare R 10/24: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. " (translated headnote)
I consider R 10/24 to be well reasoned. However, see also below for the context of the present case.

Having said all that, the patentee did not simply file new AR-1, but "filed a new auxiliary request 1 and stated that the other auxiliary requests would be withdrawn on the condition that this request be admitted". I could see why the Boards may wish to avoid any appearance of bargaining about requests.
Also, the Art. 123(2) issue for the MR was as follows: " Relative to claim 1 as filed, feature 1.3 has been introduced into the claim, in which the ADL is defined to be 'in contact with' the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL is disclosed to be 'in good contact with' the body-facing side of the absorbent core. The Board sees the omission of the qualifier 'good' to lack a direct and unambiguous basis in the application as filed." I can see how adding the term "good" could introduce questions of clarity (if the amendment is open to examination of clarity under G 3/14).
The TBA added, obiter, that all the old ARs seemed to suffer from the same Art. 123(2) issue as the main request. That seems entirely logical, given the procedural development of the case. In that event, the old ARs were not a response to the Art. 123(2) objection that was found prejudicial to the MR, and the proprietor's right to be heard to reply to that Art. 123(2) is not affected by the decision to not admit the old ARs, possibly.

The link to the decision is provided after the jump.

Just Patent Law Blog