Key points
- In this appeal against a refusal decision, the Board does not admit a set of claims corresponding to a set of claims presented before the Examining Division but subsequently amended.
- "The board notes that it was the appellant's deliberate decision to respond to the inventive-step objection raised against the set of claims filed on 17 January 2017 by replacing them with a set of claims of narrower scope instead of maintaining them as a main request and filing an auxiliary request. The board fails to see what would be problematic or unsatisfactory about an appellant maintaining, instead of withdrawing, a request which it considers to be allowable. The primary purpose of the appeal proceedings is to review the decision under appeal, not to give the appellant the opportunity to reconsider procedural decisions made earlier."
- I wonder if this decision suggests that applicants should never amend the claims before the Examining Division, instead filing only (more and more) auxiliary requests.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/07/t-015121-never-amend-claims-before.html
