In T 28/10, the board held that, where it had to be decided under Art. 12(4) RPBA whether to admit on appeal submissions already refused at first instance, this amounted to a review of the opposition division's exercise of its discretion under R. 116(2) EPC. Where the way in which a department of first instance had exercised its discretion was challenged on appeal, it was not, according to the Enlarged Board of Appeal's decision in G 7/93 (OJ 1994, 775), the board's function to review all the facts and circumstances of the case as if it were in that department's place and to decide whether or not it would have exercised such discretion in the same way. If a department of first instance was required under the EPC to exercise its discretion in certain circumstances, it had to have a certain degree of freedom when doing so, without interference from the boards of appeal. In such cases, a board was only to overrule the way in which the department had exercised its discretion if it came to the conclusion either that it had not done so in accordance with the proper principles or had done so in an unreasonable way, and had thus exceeded the proper limits of its discretion. Only in the event of an improper exercise of discretion was the board to set aside the department of first instance's decision. It would otherwise undermine the discretion conferred on the opposition division under R. 116 EPC (see also T 902/09, T 936/09, T 484/11, T 241/13).
In T 1067/08 the appellant filed a main request which was identical to the sole request not admitted in opposition proceedings. The board stated that appeal proceedings were not just an alternative way of dealing with and deciding upon an opposition and that parties to first-instance proceedings were not at liberty to bring about the shifting of their case to the second instance as they pleased, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. The board decided not to admit the main request into the appeal proceedings and stated that the exercise of the powers under Art. 12(4) RPBA might also be justified where a party's conduct - e.g. maintaining a single request which the opposition division had declined to admit into the proceedings as an abuse of procedure, and refusing to file amended and/or auxiliary requests - had in effect prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board of appeal either to give a first ruling on those issues or to remit the case to the department of first instance (see also T 936/09, T 495/10, T 2017/14).
Date retrieved: 30 December 2018