CLR IV E 2.6.3.B Grounds to be analysed vis-à-vis reasons in decision

In T 213/85 (OJ 1987, 482) the board stated that grounds sufficient for the admissibility of an appeal had to be analysed in detail vis-à-vis the main reasons given for the contested decision. If an opposition had been dismissed on the grounds of insufficient substantiation and the grounds for appeal merely disputed patentability without elaborating on the admissibility of the opposition, the appeal was inadmissible for lack of adequate substantiation (see also T 169/89, T 2001/14). According to the board in T 95/10, there were three reasons for this:

- First, the appeal procedure is not a continuation of the opposition procedure, but a distinct procedure in which any facts, evidence or arguments considered relevant must, if need be, be resubmitted (see G 10/91, OJ 1993, 420; G 9/92 and G 4/93, both in OJ 1994, 875).

- Second, the appellant's analysis of the contested decision is needed in its statement of grounds of appeal because the legal dialogue between the board of appeal, the appellant and the respondent which is being sought on appeal can take place only if the appellant has at least addressed those reasons for the contested decision which it considers incorrect.

- The third reason is that, in the absence of such an analysis, neither the board of appeal nor the respondent can establish why the appellant regards the contested decision as incorrect. It is, however, only based on this knowledge that the respondent can counter the appellant's arguments and that the board is in a position to reach an objective decision. This does not apply if the opposition division's decision itself failed to analyse the facts and arguments submitted by the appellant during the opposition proceedings (see also T 1188/08; T 720/12)

In T 501/09 the board was aware that other boards of appeal had found that an appeal based entirely on new evidence may be admissible when the grounds for opposition have remained the same (see T 1557/05). The board pointed out that the purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings (see G 9/91 and G 10/91, OJ 1993, 408 and 420), and the parties have limited scope to amend the subject of the dispute on appeal. This is reflected in Art. 12(4) RPBA. The board did not admit the fresh evidence, concluded that the appeal was not substantiated and rejected it as inadmissible.

Similarly, in T 727/09 there was an entirely new set of facts, albeit based on the same ground for opposition. The board noted that if the statement of grounds of appeal is exclusively based on these new documents, there must be a direct and clear link between the contested decision and the grounds for appeal. In the case at issue, the factual basis was, however, entirely new. The appeal was rejected as inadmissible.

Where there had been several independent reasons for the decision to refuse the application and at least one of those reasons was not addressed in the statement of grounds at all or only in insufficient detail, the board could not normally reverse the contested decision, even if it concurred with the appellant in relation to all the reasons for refusal addressed in the statement of grounds. The request of Art. 108, R. 99(2) EPC were not met (T 899/13).

However, the case underlying T 395/13 was different. Although the statement of grounds of appeal contained no substantive arguments addressing the reasoning of the decision under appeal, it nonetheless met the requirements of Art. 108 EPC in combination with R. 99(2) EPC. This was because the main objection of the appellant in the grounds of appeal was that the decision under appeal did not contain sufficient reasoning to enable the appellant to file such arguments. The grounds of appeal contained reasoning as to why the appellant considered the decision under appeal to be deficient in this manner, and hence why that decision should be set aside. R. 99(2) EPC required no more than this and in particular did not specifically require that the statement of grounds of appeal addresses the arguments in the decision under appeal. The board therefore concluded that the appeal was admissible.

In T 1/88 the board considered that the criteria of T 220/83 and T 213/85 were satisfied by a statement of grounds in which it was merely argued by the appellant that a document, which allegedly showed that the process of the patent in suit was obvious, had not been properly evaluated. The question of inventive step, on the lack of which the contested decision had been partly based, was not dealt with in detail. However, as was pointed out in T 349/09, where the appeal was found inadmissible for lack of substantiation, the appeal in T 1/88, for all its substantiation was minimal, did attack the decision under appeal.

In T 950/99, the statement setting out the grounds of appeal included the legal and factual reasons why the decision under appeal should be set aside with respect to at least one ground, namely lack of inventive step. Therefore, even if it did not contain a full reasoning with respect to each and every ground, it nevertheless met the minimum requirement of Art. 108 EPC (referring to J 22/86, OJ 1987, 280). In T 808/01, the board held that, where the statement of grounds contained several lines of argument and reasons sufficient to render the appeal admissible had been given in support of at least one of them, the appeal was admissible and it did not matter that no such reasoning had been given in support of one of others.

In T 846/01, the board held that, for an appeal to be admissible, at least one of the grounds in the written statement of grounds of appeal must relate to a point which could at least arguably have been decided in the appellant's favour by the instance appealed from but which point had not been so decided, and such favourable decision on this point would have produced a different outcome. Following T 846/01, the board in T 1178/04 confirmed that an appeal does not lie against part of a decision of a first instance tribunal if the result would have been the same even if the point had been decided in the appellant's favour.

However, according to the board in T 1045/02, a statement of grounds failed to meet the minimum requirements if it dealt with only one of several grounds for refusal. Similarly, in T 1187/04, where the appellant had dealt only with the novelty objections and not addressed inventive step, the appeal was held inadmissible.

See also T 922/05 in Chapter IV.E.2.6.3 c) "Duty of board to be impartial", below.

In T 760/08, the appellant had left it to the board to clarify inconsistencies, define the state of the art and consider which of the two features in the characterising portion, either by itself or in combination, the appellant regarded as apt to establish novelty and patentability. In support of its submissions as to the requirements to be met by the statement of grounds, the appellant had cited several decisions, including T 563/91, T 729/90 and T 162/97. While those decisions tended to support the appellant's position, they could be countered by a series of other decisions, not cited by it, which set more stringent requirements, above all T 220/83 (OJ 1986, 249) and T 1045/02. On this point, the board had already stated in T 922/05 that, in its view, the principles set out in Art. 12(2) RPBA, as a generalisation of the relevant case law, which was not entirely consistent and had mostly resulted from the specific circumstances of the individual cases concerned, served as a suitable standard for assessing the admissibility of an appeal. The statement of grounds in question did not meet the standard set by those principles.

In T 733/98, where an application was refused under Art. 97 EPC 1973 and R. 51(5) EPC 1973, on the grounds that the applicant neither communicated his approval of the text proposed for grant within the period according to R. 51(4) EPC 1973 nor proposed amendments within the meaning of R. 51(5) EPC 1973 within this period, the statement of the grounds of appeal was inadmissible, as it dealt only with the issues of the admissibility and allowability of new claims filed with the statement of grounds.

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