4.3.6 Submissions not admitted at first instance – error in the use of discretion – Article 12(6), first sentence, RPBA 2020
In T 1411/21 the board held that the convergence (or the divergence) of requests is in principle an accepted criterion for deciding on the admissibility of requests under R. 137(3) EPC. It applied not only within a set of claims filed together but also with respect to earlier requests. In T 3097/19 the board (applying Art. 12(2) and (4) RPBA 2007) underlined that non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case.
In T 714/20 the board agreed with the examining division that when oral proceedings are imminent, it is legitimate to expect the claims of subsequent requests to converge (in the sense of the definition given in T 1134/11), so that a focused discussion can be had during the oral proceedings and a decision can be arrived at in a reasonable time. The board added that the less a new set of claims "further defined" the subject matter of a previous one but changed the focus of the discussion, the more was admittance of the new claims detrimental to procedural economy. According to the board, this argument could bear the more weight, the later the new set of claims were filed. In the case in hand, the requests in question represented two clearly different lines of amendments (two different features added to distinguish the subject-matter of claim 1 from prior art) trying to overcome an inventive step objection. For a further recent decision on convergence in examination, albeit applying Art. 12(2) and (4) RPBA 2007.
In the inter-partes case T 2204/18, the board (applying Art. 12(4) RPBA 2007) held that the opposition division, which had relied on the convergence criterion among others, had exercised its discretion in accordance to the right principles in a reasonable way. See however T 683/19, in which the board (applying Art. 12(4) RPBA 2007) overruled a decision of the opposition division based on lack of convergence as the request at issue constituted a timely bona fide reaction to the admission of a new document by the opposition division.