4.3.5 Incomplete case in grounds of appeal or reply – Article 12(3) RPBA 2020 in conjunction with Article 12(5) RPBA 2020
(i) Requests not substantiated
In T 2457/16 the board held that the patent proprietor's conduct was not in keeping with the requirement in Art. 12(3) RPBA 2020 that the grounds of appeal contain the party's complete case, because it had not only not explained what amendments had been made in its auxiliary requests or their purpose but had also made sweeping reference to requests filed at first instance that were supposed to still apply on an auxiliary basis, without giving any further details and thus leaving it unclear which requests were to be examined in what order. See also T 1756/16.
In T 2115/17 the board held that merely identifying an amendment (without indicating its basis in the application as filed) was not enough to enable it and the appellant (opponent) to understand the rationale behind the request concerned. On the contrary, it put the onus on the board and the appellant to piece together or deduce the case being made themselves and come up with suitable responses, which was at odds with the requirements of Art. 12(3) RPBA 2020 (see T 687/15, dealing with Art. 12(2) RPBA 2007).
(ii) Claims not presented in full
In T 1421/20 requests 1a to 5a were introduced and commented on in the statement of the grounds of appeal but no claims were filed at that stage. Hence they did not fulfil the requirements of Art. 12(3) RPBA 2020 and the board had discretion not to admit them into the proceedings for this reason only (Art. 12(5) RPBA 2020). Since the requests were not part of the decision under appeal, they were further considered to be amendments (Art. 12(2) and (4) RPBA 2020).
(iii) Objections not adequately substantiated
In T 2253/16 the only argument the appellant (opponent) had put forward in its grounds of appeal in support of its assertion that the subject-matter of claim 1 lacked novelty over D4 was that the contested decision contradicted itself on one of the features. The board observed that there was no analysis of D4 showing where the appellant considered what claim features to be disclosed. Art. 12(3) RPBA 2020 required that the grounds of appeal contain the appellant's complete case. The board could not simply refer to the submissions made in the opposition proceedings, it being clear from Art. 12(3) RPBA 2020 that they were not automatically part of the appeal case. An unspecific reference to the notice of opposition made no difference; Art. 12(3) RPBA 2020 required that all facts and objections be specified expressly.
The board in T 2796/17 similarly held that, under Art. 12(3) RPBA 2020, the appellant had to set out clearly the reasons for requesting that the decision under appeal be reversed and specify expressly all facts, objections and evidence relied on. Attacking the decision only generally or referring generally to the case made in the opposition proceedings was not enough for this.
For further cases relating to insufficient substantiation of an objection, see e.g. T 2227/15 (with regard to Art. 12(2) RPBA 2007, which, as the board noted, corresponds to Art. 12(3) RPBA 2020), T 565/16 (novelty objection based on D3, mere reference to submissions in opposition proceedings). See also chapter V.A.4.2.2b) " Submissions at first instance not automatically part of appeal case".
(iv) Case not fully prepared
In J 3/20 the appellant invoked the principle of protection of legitimate expectations for the first time during oral proceedings before the Legal Board of Appeal and alleged that it had trusted the content of a communication in a parallel case, which, however, it had already received in 2016. The Legal Board of Appeal highlighted that the condition in Art. 12(3), first sentence, RPBA 2020 required a complete preparation considering all the relevant documents that were available. Thus, in its view, no reasons were apparent that could justify why the appellant had presented the new defence and the underlying facts for the first time at such a late stage of the proceedings, thereby counteracting principles of procedural economy. The Legal Board used its discretion under Art. 12(4) RPBA 2020 and Art. 12(6) RPBA 2020 and Art. 13(1) RPBA 2020 not to admit the new submissions.
- T 2117/18
Catchword:
In order to substantiate an objection in the appeal proceedings which the Opposition Division did not consider convincing, it is necessary to provide specific reasons why the finding and the reasoning in the decision under appeal is supposedly incorrect with regard to this objection (Reasons 2.2.2-2.2.11). As a rule, in appeal proceedings general references to submissions made in the proceedings before the departments of first instance are not taken into account due to a lack of substantiation. Attaching the notice of opposition to the statement of grounds of appeal is to be considered equivalent to such a general reference to previous submissions (Reasons 2.2.13-2.2.14). An objection is to be considered to have been validly submitted only at the time on which sufficient substantiation is provided (Reasons 2.2.17).