An admissible appeal does not require the separate filing of an amended main request.

This case law article is about case: T 0498/21

• A main request does not need to be attached as an annex to the statement of grounds of appeal in order to be regarded as “expressly specified” according to Art. 12(3) RPBA 2020.
• When it is self-evident why a main amendment overcomes the previously raised objections, “the lack of an express justification for the amendment does not weigh heavily against the appellant”.

Admissibility of the Appeal

In T 0498/21, an appeal was lodged against the decision of the OD to revoke the European patent No. 12726541.1. In their statement of GoA, A referred to the main request filed during the Opposition oral proceedings and stated that: “[…] the main request is the same as the main request filed during the Opposition oral proceedings, with the exception of the deletion of the last optional feature of claim 3 […].”. This main request was not filed as a separate annex to the GoA. Additionally, A did not provide any reasons as to why this amendment would overcome the objections raised during the Opposition proceedings.

O argued that the appeal did not meet the requirements of Rule 99(1)(c) and (2) EPC. According to O, the absence of a copy of the amended main request attached to the statement of GoA undermined the wording of the notice of appeal. As a result, O concluded that the request defining the subject of the appeal was not clearly defined.

The BoA did not agree with O’s viewpoint and considered that the appeal met the requirements of both Rule 99(1)(c) and Rule 99(2) EPC since the notice of appeal included the “we hereby appeal”-statement and since the statement of GoA indicated the extent to which the impugned decision was to be amended.

Admissibility of the main request

With regard to admittance of the main request, O stated that the main request should not be admitted in the appeal proceedings under Art. 12(2) to (6) RPBA 2020 for several reasons. Firstly, O believed that the main request was not specified expressly as required by Art. 12(3) RPBA 2020. The BoA did not agree and considered that the main request was expressly specified, even though the main request was not a “document referred to” within the meaning of Art. 12(3)(a) RPBA 2020. For this reason, the BoA decided that the requirements under Article 12(3) RPBA 2020 were met.

Secondly, O deemed that the main request constituted an amendment not justified by A. Under Art. 12(4) RPBA 2020, a party must provide reasons why an amendment overcomes the previously raised objections. The BoA indeed noted that A had not provided such reasons in their GoA. However, the BoA further commented that the deletion of the optional feature in claim 3 directly addressed the objections of the OD. Therefore, the BoA stated, it is self-evident why the amendment overcomes the OD’s objections. Under such circumstances, “the lack of an express justification for the amendment does not weigh heavily against the appellant.”

Finally, O stated that the amended main request should have been submitted during the Opposition proceedings in accordance with Art. 12(6) RPBA 2020. During the oral proceedings before the OD, O had raised an objection under Art. 83 and/or 84 EPC, as well as an objection under art 123(2) EPC. However, A was only informed about the OD’s negative conclusion on the objection under Art. 123(2) EPC during the oral proceedings. The objection under Art. 83 and/or 84 EPC was seemingly only taken up by the OD in the impugned decision. Under these circumstances, the BoA decided that A should not have already submitted a claim request addressing the Art. 83 and/or 84 EPC objection during the oral proceedings before the OD.

Decision of the Board (of Appeal)

The BoA concluded that the appeal was admissible and further admitted the main request into the appeal proceedings.