The main request under consideration was filed as the [patent proprietor’s] fourth auxiliary request with letter of 4 February 2013, i.e. one month before the oral proceedings (OPs) before the board. It is identical to the main request underlying the decision of the opposition division (OD) […].
[2.1] According to Article 13(1) RPBA […] any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.
[2.2] The [patent proprietor] argued that in August 2010, some days before the end of the time limit for filing the statement of grounds of appeal, the professional representative in this case was changed. It was not possible at that time to review the case carefully and to submit correct requests. Use had to be made of what the representative’s predecessor had prepared.
[2.3] However, a change of professional representative is not an objective excuse for not filing appropriate requests along with the statement of grounds of appeal, and in particular for not maintaining the main request underlying the decision under appeal. In fact, this rather presupposes a deliberate choice by the [patent proprietor]. In any case, a change of representative at the time of filing the statement of grounds of appeal certainly cannot justify the filing of the main request only one month before the date of OPs before the board.
[2.4] Moreover, in its letter dated 4 February 2013, the [patent proprietor] only stated with regard to the fourth auxiliary request: “It is requested that the patent be maintained in amended form with the same claim 1 submitted during the opposition procedure with letter of December 18, 2008 of the previous patent representative, and with dependent claims 2-5 of the patent as granted”. No arguments in support of the inventiveness of the subject-matter of claim 1 – which would challenge the decision of the OD in respect of the main request – were given.
[2.5] In the board’s view it would not serve the purpose of procedural economy in these appeal proceedings to allow the [patent proprietor] to defend its main request underlying the decision under appeal for the first time in OPs before the board. Moreover it would go against the principle of fair proceedings to admit the main request into the proceedings, since the [patent proprietor’s] conduct led the [opponent] to believe that the main request underlying the decision of the opposition proceedings would no longer be the subject of discussion, and, also due to the lack of any written arguments in support of the fourth auxiliary request in the [patent proprietor’s] letter of 4 February 2013, the [opponent]might well have been surprised by the [patent proprietor’s] arguments.
[2.6] Thus, the board, exercising its discretion under Article 13(1) RPBA, did not admit the main request into the proceedings.
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