Under Art. 12(4) RPBA 2007, a board of appeal has discretion to refuse to admit requests which could have been presented or were not admitted in the first- instance proceedings. In the boards' view, this applies all the more to requests that were filed and subsequently withdrawn during the first-instance proceedings, since such a course of events clearly shows that these requests could have been presented in those proceedings. The purpose of an appeal is to review what was decided at first instance and, as a logical consequence, not what was not decided (T 528/93, T 1186/06, T 390/07, T 1587/07, T 361/08, T 340/10, T 1525/10, T 140/12, T 1689/12).

A request which has been withdrawn can, in principle, if admitted by the department or board hearing the case, be reintroduced to the proceedings, whereas a request which has been abandoned cannot be resubmitted at a later stage (T 926/12).

In T 998/12 the board pointed out, among other things, that the withdrawal of a request by way of procedural declaration was binding and as a rule irrevocable, and meant that the request in question immediately ceased to be pending. Although this legal effect applied primarily to the proceedings pending at the time, it would be incompatible with the meaning and purpose of this procedural rule if the effect could in the end be undermined by re-filing the request in any subsequent appeal proceedings. In practice, that would indirectly enable a "withdrawal of the withdrawal" (see also T 793/13).

(i) Request not admitted

One criterion to be considered by a board of appeal in exercising its discretion is whether the withdrawal of a request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance. In T 679/09 the withdrawal of auxiliary requests I to IV in the opposition proceedings had exactly this effect. While the appellant may not have intended to avoid a decision of the opposition division on the admissibility of inter alia auxiliary request III, this was the inevitable result of its withdrawal (T 495/10, see also T 933/04, T 1067/08, T 935/12, T 1697/12).

In T 1525/10 the board stated that if the appellants had wanted to preserve their right to have any of auxiliary requests I to III considered by a board of appeal, they should have maintained them in opposition proceedings. It is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith. A proprietor who files auxiliary requests by which it delimits the framework of the opposition proceedings and then deliberately withdraws them in order to avoid any adverse decision being reached infringes this general principle by seeking to introduce these requests into appeal proceedings.

The claim request which had been replaced by another request in the proceedings before the opposition division because it was manifest that it would fail, thereby avoiding a formal decision, but which had then been filed again on appeal, was considered inadmissible by the board (T 390/07).

In T 691/09, the board deemed the belated introduction of a request which had been withdrawn during the oral proceedings before the opposition division to be an abuse of procedure.

(ii) Request admitted

In T 2599/11 the board admitted the sole request into the appeal proceedings that was withdrawn in opposition proceedings. The board was of the opinion that the purpose of the appeal proceedings as defined in G 9/91 and G 10/91 (OJ 1993, 408, 420) did not prevent the appellant from submissions and requests which, after revocation of its patent by the opposition division, reverted to a more broadly worded version in appeal proceedings than the claims defended in opposition proceedings, if these broader claims did not amount to a completely fresh case. With respect to Art. 12(4) RPBA 2007 the board had to consider whether the non-filing of the sole request or the withdrawal of the similar request A in the opposition proceedings prevented the opposition division from giving a reasoned decision on the critical issues. The board referred to T 361/08 according to which it is not the patentee's right to revert to granted claims if these claims did not form a basis for the decision under appeal because the request comprising these claims was withdrawn in the first-instance proceedings. In the case at issue, the board concluded that the critical issues in the opposition and the appeal proceedings were identical in so far as the question had to be answered whether the claimed subject-matter involved an inventive step. Hence, the sole request of the appellant did not bring an entirely fresh case and was admitted into the proceedings (see also T 467/13).

In T 937/11 the main request was identical to auxiliary request 1 which was withdrawn before the opposition division. The board stated that the circumstances of the present case had to be distinguished from the situation underlying T 1525/10 and T 390/07 (see above). Because the opposition division's reasons for rejecting the main request evidently applied likewise to the claims of auxiliary request 1, the appellant did not avoid a decision on the ground for opposition when it withdrew auxiliary request 1. Moreover, the appellant neither surprised nor disadvantaged the opposing parties on appeal when it turned the withdrawn auxiliary request 1 into its main request before the board.

In T 883/12 the request was very similar to the request which was withdrawn. The proprietor argued convincingly why it had not been unreasonable to withdraw a number of the auxiliary requests before the opposition division without a decision having been taken on them, namely because the opposition division had deemed, with respect to a higher ranking request, that a particular feature was required in order to allow an inventive step to be recognised; the claims of the withdrawn auxiliary requests did not include this feature. The board stated that the current request was not one which could reasonably have been filed in the first instance proceedings (i.e. in the sense of being both submitted and maintained, such that a decision on it would be taken by the department of first instance).