The question at stake is the following: do new requests in which claims present in previous requests have been deleted represent an amendment to the party’s case or not?
In other words do the provisions of Art 13 RPBA20 and especially Art 13(2) RPBA20 apply when requests are late filed in appeal?
Position 1 requests with deleted claims do not represent an amendment
Some boards have taken the position that the deletion of method claims, product claims, dependent claims or alternatives in a claim request is not to be regarded as an “amendment to the party’s appeal case” if the deletion does not change the factual and legal framework of the case.
See T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1; T 1857/19, reasons 1.1.
In T 1857/19, the board held that “Even if the deletion of a claim category were always to be considered an amendment, the fact that it significantly enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as exceptional circumstances in the sense of Art 13(2) RPBA20.
In T 2201/19, the board held that “A new auxiliary request filed after the summons to oral proceedings, which only contains an independent process claim already contained in the main request maintained by the opposition division, while all other previous product claims have been deleted, cannot then be regarded as an amendment of the appeal submissions within the meaning of Art 13(2) RPBA20 which in principle remains unconsidered, if the previous submissions of the parties already provide a sufficient basis for deciding on the new auxiliary request. T 2201/19 deviates from T 2091/18, cf. point 5 of the reasons.
Those boards concluded that the provisions of Art 13 RPBA20 were not to be applied at all, i.e. defining a “non-applicability approach”, if the deletion does not change the factual and legal framework of the case.
Position 2 requests with deleted claims do represent an amendment
Other boards have taken the position that the deletion of such claims or alternatives have indeed to be regarded as an “amendment to the party’s appeal case“.
Accordingly, they have applied Art 13 RPBA20 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Art 13 RPBA20, in particular in view of its impact on the factual and legal framework of the case.
See T 2091/18, reasons 4, amended claims admitted; T 1597/16, reasons 4, amended AR VI admitted; T 1439/16, reasons 2, admitted as not detrimental to procedural economy; T 1224/15, reasons 5, admitted as objection under Art 123(2) by the respondent was late; T 908/18, reasons 1, admitted; T 682/16, reasons 5 to 8, admitted.
Concerning Art 13(1) RPBA07 see T 168/16, reasons 2.1 and 2.2, “Restricting the requests to a smaller number thereof each having a single claim already present in previous requests also contributes to the procedural economy”.
In T 494/18 the new request with deleted claims was admitted.
In T 1259/17 the new request with deleted claims was not admitted as the proprietor did only file the requests with deleted claims two weeks before the oral proceedings. There were still problems under Art 123(2) left.
When new requests are filed in which previous claims are deleted it looks rather academic to decide whether they represent a change to a party’s case
What matters is that the deletion of some claims in previous requests can significantly enhance procedural economy.
Be it in appeal or in opposition, late requests in which claims are deleted should not give raise to new objections and resolve all objections raised up to then in the procedure.
Even late filed, the admissibility of such requests answering both conditions, should, in principle, not be challenged.
Before opposition divisions
If the proprietor intends to file requests in which claims are deleted, he should already do so before the opposition division.
This is the safest option and those requests should, in principle, be admitted by an opposition division, but the opposition division keeps its entire discretion whether to admit those requests or not.
Before boards of appeal
If the proprietor prefers waiting to enter appeal to file requests in which claims are deleted, he should do so as early as possible that is preferably when entering appeal.
The proprietor should better not wait until the board has expressed an opinion, be it in a communication or in the annex to the summons.
He always risk that the discretion of the boards is not in favour of the admissibility of such late filed requests.
Update 30 April 2022: Conflicting case law is summarized in this addendum post