The boards have frequently held that a statement of grounds referring generally to submissions made at first instance, as a rule, cannot be considered sufficient for the purposes of Art. 108, third sentence, EPC (see e.g. T 254/88, T 432/88, T 534/89, T 90/90, T 154/90, OJ 1993, 505; T 287/90, T 188/92, T 646/92, T 473/09, T 450/13).
In T 432/88 the appeal filed only made a general reference to the appellant's submissions in the preceding opposition proceedings and thus amounted to no more than a mere assertion that the contested decision was incorrect, without stating the legal or factual reasons why that decision should be set aside. Consequently, the appellant had left it entirely to the board and the respondent to conjecture in what respect the appellant might consider the decision under appeal to be defective. This was just what the requirement that grounds for appeal be filed is designed to prevent. This was followed in T 534/89, where the board pointed out that otherwise the respondent is at a loss to know how to prepare his case and the board cannot direct the appeal proceedings in an efficient way.
Merely referring to one's own first-instance submissions could not normally replace an explicit account of the legal and factual reasons for the appeal. Only exceptionally did the case law allow substantiation to take that form. References to earlier submissions, even when taken together with the contested decision, did not as a rule clearly indicate which grounds of the decision were regarded as mistaken, and why. The board and the opposing party could not then consider the merits of the appeal without making investigations of their own (T 349/00). See also T 165/00, where the case law was reviewed. Here the board could not share the appellant's view that reference on appeal to pleadings filed at the preceding instance had to be interpreted as a fresh filing of those pleadings and that the statement of grounds therefore had to be regarded as adequately reasoned. This ran counter to the rule highlighted in the boards' case law that grounds of appeal should state the legal and factual reasons why the appeal should be allowed and the contested decision set aside and that it was not enough merely to seek fresh examination of the patentability requirement found not to be met at the previous instance by indicating disagreement with that finding (see T 220/83, OJ 1986, 249; T 213/85, OJ 1987, 482; T 145/88, OJ 1991, 251; T 1462/08; T 2077/11).
In a small number of isolated decisions, however, the boards have accepted a general reference to submissions at first instance as potentially constituting grounds for an admissible appeal (T 355/86, T 140/88, T 216/10), but these decisions were given in special cases in which those submissions already adequately addressed the grounds underlying the contested decision.
In T 725/89, submissions filed with the opposition division before despatch of the contested decision and commenting on the outcome of the oral proceedings directly preceding the decision were deemed to constitute admissible grounds for appeal, even though the actual statement of grounds referred to them only generally.
Date retrieved: 30 December 2018