CLR IV E 2.6.3.A Legal or factual reasons to be specified

In J 10/11 the board reviewed the case law of the boards of appeal on the requirements to be fulfilled in the statement of grounds. If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (see T 220/83, OJ 1986, 249, and T 177/97; affirmed by numerous decisions, and in particular recently by T 573/09).

Whether the requirements of Art. 108, third sentence, EPC in conjunction with R. 99(2) EPC are met has to be decided on the basis of the statement of grounds of appeal and of the reasons given in the contested decision, taking into account any amendments made to the claims (see e.g. J 22/86, OJ 1987, 280; T 162/97, T 2001/14). Exceptionally, it has been acknowledged that the requirement for admissibility may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement of grounds that the decision should be set aside (see J 22/86). The appellant had made no submissions regarding the causal relationship between the reasons given in the statement of grounds of appeal and the asserted invalidity of the findings of the decision impugned. If no causal relationship were required, any submission, even one not connected with the reasons on which the decision impugned is based, would be acceptable. This would render the provisions of Art. 108 EPC moot. Whilst the grounds do not have to be conclusive in themselves, i.e. justify the setting aside of the decision impugned, they must enable the board to assess whether or not the decision is incorrect. The appeal was rejected as inadmissible.

In T 395/12 the appeal was also held inadmissible; the applicant's only statement that directly addressed the decision under appeal was that the examining division was "wrong", with no explanation why. Decisions T 213/85 (OJ 1987, 482) and T 95/10 clarify that the appeal procedure is not a mere continuation of the examination procedure (in accordance with decisions G 10/91, OJ 1993, 420; G 9/92, OJ 1994, 875 and G 4/93, OJ 1994, 875), but separate therefrom. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal; they are not a second go at the examination procedure, but are meant to review decisions made by the examining divisions, based on the objections raised against the decision in the grounds of appeal, which must therefore relate to the reasons on which the decision under appeal is based. The appeal had also to be considered inadmissible because the grounds failed to deal with all the reasons the examination division advanced for refusing the application. According to T 213/85 and T 1045/02, the grounds of appeal must deal with all those reasons on which the decision under appeal is based. This is consistent with the requirement of Art. 12(2) RPBA, according to which, "The statement of grounds of appeal and the reply shall contain a party's complete case". See also T 473/09, where the appeal was also held inadmissible as the grounds failed to deal with all the reasons for refusing the application.

In T 2532/11 the appeal was found inadmissible as the appellant's statement of grounds did not contain any reference to the impugned decision, let alone any explanation as to why it was wrong and should be set aside.

In T 220/83 (OJ 1986, 249) the board ruled that the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision was based. The arguments had to be clearly and concisely presented to enable the board and the other party or parties to understand immediately why the decision was alleged to be incorrect, and on what facts the appellant based his arguments, without first having to make investigations of their own. Whilst passages from the literature setting out the state of the art might - provided sufficiently precise reference was made to them in the grounds of appeal - be considered an integral part of the grounds, they could not by themselves form a sufficient statement of grounds. This principle was expressly confirmed in many decisions, for example T 250/89 (OJ 1992, 355), T 1/88, T 145/88 (OJ 1991, 251), T 102/91, T 706/91, T 493/95, T 283/97, T 500/97, T 1045/02, T 809/06, T 2346/10, T 294/11 and T 2001/14 (see also T 12/00, where the case was contrasted with T 220/83 and found to differ on the facts).

In T 22/88 (OJ 1993, 143), the board held that a written statement announcing only that the appellant would complete an omitted act (here the filing of the translations of the revised claims) did not comprise sufficient reasons, and therefore did not constitute a valid statement of the grounds of appeal.

Where, as a result of contradictions and inexactitudes in an anyway very brief statement of grounds, it is left to the board to make sense of it, the appeal is usually inadmissible (T 760/08).

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