T 1436/18 - No circumventing of Art. 12(4) RPBA 2007

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from Just Patent Law Blog https://justpatentlaw.blogspot.com/
T 1436/18 - No circumventing of Art. 12(4) RPBA 2007
https://justpatentlaw.blogspot.com/2022/10/t-143618-no-circumventing-of-art-124.html

Key points

• The Board, on the admissibility of auxiliary requests 2 to 5: 

  2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings [before the OD]. "

• "It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings."

• " The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not."

•  The requests are not admitted under Art. 12(4) RPBA 2007

• The Board, however, admitted AR-6 filed with the appeal and found those claims to be allowable as well.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://justpatentlaw.blogspot.com/2022/10/t-143618-no-circumventing-of-art-124.html