4.3.5 Incomplete case in grounds of appeal or reply – Article 12(3) RPBA 2020 in conjunction with Article 12(5) RPBA 2020
In T 2457/16 the patent proprietor had left the board and the opponent in the dark about the order in which its auxiliary requests were to be examined, precisely what amendments had been made in them and what purpose they served. The board held this to be contrary to the requirement under Art. 12(3) RPBA 2020 as the patent proprietor had thereby shifted to the opponent and the board the responsibility – properly incumbent on it – to select from the numerous requests one that might ultimately be allowable (see also R 11/08). The board therefore decided not to admit the auxiliary requests in question (Art. 12(4) and (2) RPBA 2007 and Art. 12(3) and (5) RPBA 2020).
In ex parte case T 1421/20 requests were introduced and commented on in the statement of grounds of appeal, but no claims were filed, and so the board had discretion not to admit them under Art. 12(5) RPBA 2020. The board took into account that the requests contained a feature which had previously been found to be unclear. Since none of the requests at issue met the requirement of clarity, the board exercised its discretion not to admit these requests.