A Board of Appeal of the EPO decides on the admissibility of patent claims in the second instance

In a decision from July 15, 2014 (T 0036/12) a Board of Appeal had to deal with a main request and an auxiliary request having a scope broader than those considered in the appealed decision. The Board of Appeal did not accept these claim requests based on the argument that they have not been the object of the decision under appeal, since during the first instance opposition proceedings only claim requests have been considered which had a more limited scope. The Board of Appeal noted that former Board of Appeal decisions were not that strict in this regard, which allowed the patentee to defend his patent in the second instance in a broader manner than it was defended in the first instance. However, the Board of Appeal reasoned that meanwhile the Rules of Procedure of the Boards of Appeal in particular, Article 12 (4) RPBA have changed which justifies a different approach. Admitting the broader requests in the second instance would not only be contrary to the main purpose of the appeal proceedings, which is a review of the decision of the first instance, but also grant the possibility to shift the case as it pleases to the appeal in a kind of forum shopping. Remitting the requests back to the first instance is not an alternative either, because it would be unacceptable from the procedural economy’s point of view, since it would substantially and unnecessarily delay the proceedings.