CLR IV E 2.6.5.B By patent proprietor or applicant and appellant

An appeal by the patent proprietor is to be considered as sufficiently substantiated to satisfy the requirements of Art. 108 EPC, third sentence, even if it does not state any specific reason why the decision is contested, provided that two criteria are met:

- there is a change in the subject of the proceedings due to the filing of amended claims together with the statement setting out the grounds of appeal,

- the reasons for the decision are no longer relevant in view of the amended claims (see e.g. T 105/87, T 563/91, T 717/01, T 934/02, T 655/03 and T 1708/08).

The board in T 934/02 added that it was therefore not necessary and would also be pointless for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) was no longer defending in the appeal proceedings. See also T 1197/03 and T 642/05. However, where the application was not refused on the basis that the previous set of claims on file could not be allowed, i.e. for lack of clarity, novelty or inventive step, rather on the ground that there was no agreed set of claims, filing new claims was not an adequate response (T 573/09); the statement of grounds should have set out why the appellant should be given the opportunity to have the proceedings continued before the board.

If an appellant desires that the allowability of alternative sets of claims should be considered in an appeal, such alternative claims should normally be filed with the statement of grounds of appeal or as soon as possible thereafter (T 153/85, OJ 1988, 1).

In line with the case law, the board in T 760/08 began by observing that grounds for appeal could be also deemed sufficient where new facts had been submitted which deprived the decision of its legal basis (T 252/95), particularly through the filing of new sets of claims (T 934/02). Appellants had two options when it came to submitting their statement of grounds: they could attack the opposition division's decision as flawed, so that, provided they made a convincing case with respect to all reasons underlying the decision and the board accepted that case, it would be able and obliged to set the decision aside on all counts.

Alternatively, they could file amended claims which they considered apt to remedy the deficiencies identified by the opposition division in the decision.

In the latter case, however, it was not enough merely to file a new set of claims without comment. Rather, appellants had to set out why and to what extent the amended set of claims was a response to the factual and legal assessment on which the opposition division had based its decision (T 220/83, OJ 1986, 249; and T 145/88). What mattered in this connection was not the length of the statement of grounds but its substance: "The requirement of Art. 108 EPC is for a statement which sets out the substance of the Appellant's case; that is, the reasons why the appeal should be allowed and the decision under appeal should be set aside. … a well-drafted statement of grounds of appeal should contain reasoning that is full but concise. And, in general, it is obvious that the less reasoning that a Statement contains, the greater will be the risk that the appeal will be rejected as inadmissible for non-compliance with Art. 108 EPC." (J 22/86, OJ 1987, 280). In T 933/09 the board considered that the mere filing of amended claims did not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based. The appeal was rejected as inadmissible.

T 2453/09 also confirmed that it is established case law (see e.g. T 760/08) that an appeal can be based on new amended claims in so far as the amendments are intended to address the grounds of the impugned decision. See also T 1538/09. However, the mere fact of filing amended claims with the statement of grounds of appeal is not sufficient if it does not overcome the reasons for the refusal in the case at issue.

The appellant in T 1707/07 did not address the reasons given in the decision under appeal and it was thus not clear to the board why the decision under appeal was alleged to be incorrect. The appeal was rejected as inadmissible. See also T 502/02 and T 132/03.

In T 23/03 the factual basis of the contested decision remained unchanged and the amendments made to the claims filed with the statement of grounds of appeal did not add anything which implicitly could clarify as to why the appellant might be of the opinion that the contested decision no longer applied to the new dependent claims. The appeal was therefore inadmissible.

In T 295/04, the statement of grounds contained only a general reference to pleadings submitted during the proceedings at first instance and a set of new claims. Since such a general reference could not be regarded as setting out why the department of first instance's decision should be amended, the appeal was dismissed as inadmissible.

In T 257/03, since all the board could gather from the statement of grounds was that the appellant sought the reopening of the entire opposition proceedings, but not why it considered that the opposition division's decision should be amended, it dismissed the appeal as inadmissible.

In T 1276/05 the patent proprietor/appellant reverted back to a form of claim which had been effectively withdrawn during the opposition proceedings, i.e. the patent as granted, without explaining why the contested decision was wrong. The board noted that the lack of a need for explanation was based on the specific situation of the case before it, wherein - unusually - the offered amendments self-evidently overcame the grounds for the decision and the appeal was thus admissible.

In T 2532/11 the question also arose whether newly filed requests could be seen as implicit grounds of appeal. A statement of grounds of appeal supported by amended claims may define, at least implicitly, the extent to which the appellant wishes the decision under appeal to be set aside. Many decisions have adopted a lenient position and deemed appeals admissible if the competent board was able to infer from the particulars of the case the presumed intentions of the appellant and the probable reasons underlying its actions (T 729/90, T 563/91, T 574/91, T 162/97). Appeals have also been held admissible where there was a change in the subject of the proceedings due to the filing of new claims together with the statement of grounds and the latter set out in detail why the raised grounds for opposition did not prejudice the maintenance of the patent as amended on the basis of these new claims (T 717/01, T 934/02 referring to J xx/87 (=J 902/87), OJ 1988, 323 and T 105/87). According to the board, the purpose of the statement of grounds, together with the notice of appeal is to define the scope of the appeal. This definition lies within the discretion of the appellants as a part of the principle of free disposition. Without prejudice to the provisions of Art. 114 EPC, which are of limited application in opposition proceedings, the board of appeal has the duty to assess whether the appeal is well-founded within the frame of the case as presented by the appellants but it cannot guess what the arguments are, let alone, provide arguments in lieu of the appellants. Conversely, the principle of free disposition does not extend such that it should allow the appellants to build a new case, so as to render the decision under appeal purposeless. A direct link must be maintained between the decision under appeal and the statement of grounds of appeal.

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