T 0720/12 - Repeating arguments in appeal

EPO T 720/12

For the decision, click here

Key point

• In this case, the patentee as respondent argued that the appeal was inadmissible.
• The patentee seems to have argued that the opponent had only repeated earlier arguments and had not presented new arguments in appeal.
• The Board: " Further, the arguments in the cited paragraphs of point 3.1 of the statement deal with the decision, more importantly had to be repeated because they had not been taken into consideration in the impugned decision. This concerns the point made by the opponent that the portion (38) of the shaft (37) is "exposed" and "can be engaged directly", which is indeed not discussed in the impugned decision, points II.3.2 and II.3.4. This would imply that the impugned decision has insufficiently taken into account the opponent's arguments presented in the first instance proceedings. Such a repetition cannot lead to an inadmissible appeal (T 1188/08, supra, point 1.1).

Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondent [Patentee] contests the admissibility of the appeal arguing that the statement setting out the grounds of appeal (hereafter referred to as the statement) fails to indicate the reasons why the decision under appeal is wrong or why it should be set aside, contrary to Article 108, third sentence, EPC and Rule 99(2) EPC.

1.2 For the respondent, the statement does not deal with the impugned decision, does not even refer to it, and merely repeats the earlier objections against the patent. For admissibility, the impugned decision is to be attacked, not the patent, the appeal proceedings being distinct proceedings and not affording to have a "second go" in opposition. In the present case, there is not even a request to set aside the impugned decision. For an appeal to be regarded admissible, an analysis of the reasons given in the impugned decision is required, which is missing in the present statement
(T 1188/08, points 1.1 and 1.4; T 95/10, point 1; T 349/09, points 4-6, 10; none published in OJ EPO; Case Law of the Boards of Appeal, 7th Edition, 2013, IV.E.2.6.3.b).

The respondent further argues that it is inevitable that some of the arguments put forward in the statement will relate to the impugned decision. However, such an implicit link is not enough for rendering an appeal admissible since an explicit analysis of the reasons given in the impugned decision is mandatory (T 349/09, supra, points 13 and 14).

The respondent holds the view that the arguments presented in the statement are the same as those already presented to the opposition division before it took the impugned decision. In particular, the arguments in the penultimate paragraph of page 2 and the paragraph linking pages 2 and 3 of the statement were already identically present in the appellant's letter dated 14 September 2011 filed before the oral proceedings in opposition. They further relate only to objections against the patent, they do not present an analysis of the reasons given in the impugned decision, point II.3.4. They do not address the opposition division's findings that there is not "sufficient room" foreseen in the device of D1 to engage the stop knob (43) or that the latter "could [not] be operated" to rotate the shaft (37).

Although it is admitted that it is not required in the EPC or RPBA to bring new arguments in appeal, the present mere repetition of the arguments already presented before the opposition division without analysing the reasons given in the impugned decision cannot lead to an admissible appeal (T 349/09, supra, points 6, 21, 22).

The respondent and the Board are left to piece the statement and the decision together, implying further investigations on their part (T 349/09, supra, point 8).

1.3 The Board cannot follow the respondent's view for the reasons below, as also discussed at the oral proceedings.

An explicit reference to the impugned decision is made in both the appeal and the statement (page 1), with the unambiguous request to set it aside. The arguments provided by the appellant are clearly and concisely presented and 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 (Case Law of the Boards of Appeal, 7th Edition 2013, IV.E.2.6.3.a; see also T 349/09, supra, point 8.a).

It is referred for instance to the lack of novelty objection vis-à-vis D1 under point 3.1 of the statement and, in particular to the last paragraph on page 2 and the one bridging pages 2 and 3, which is unambiguously a response to the reasoning given in the impugned decision, point II.3.4. There is no particular difficulty or further investigation required for relating (or linking) the arguments on novelty of the subject-matter of claim 1 over D1 put forward in the impugned decision (point II.3.4) to those of the appellant (statement, point 3.1). Contrary to the respondent's view, the above mentioned paragraphs of point 3.1 of the statement intend to demonstrate why the reasons given under point II.3.4 for novelty are wrong, de facto explicitly addressing the impugned decision, i.e. not merely raising objections against the patent.

Further, the arguments in the cited paragraphs of point 3.1 of the statement deal with the decision, more importantly had to be repeated because they had not been taken into consideration in the impugned decision. This concerns the point made by the opponent that the portion (38) of the shaft (37) is "exposed" and "can be engaged directly", which is indeed not discussed in the impugned decision, points II.3.2 and II.3.4. This would imply that the impugned decision has insufficiently taken into account the opponent's arguments presented in the first instance proceedings. Such a repetition cannot lead to an inadmissible appeal (T 1188/08, supra, point 1.1).

Finally, as also discussed during the oral proceedings, the main reasons in the impugned decision on novelty are covered by the statement, fulfilling also the second condition for admissibility recalled in T 349/09, supra, point 8.b.

In view of the above, contrary to the respondent's view, the conclusions of inadmissibility drawn in T 349/09 and T 1188/08, supra, do not apply and the requirements set in Rule 99(2) EPC are fulfilled.

Since the other conditions according to Article 108 EPC and Rule 99 EPC are also met, the appeal is admissible (Rule 101(1) EPC).

1.4 In T 220/83, OJ EPO 1986, 249, cited by the respondent, the Board found that merely referring in general terms to passages from the literature showing the state of the art and to the Guidelines for Examination cannot form sufficient statement of grounds of appeal. Since this does not reflect the present case, the conclusion of inadmissibility drawn in T 220/83, supra, does not apply either.

The patent was then revoked for lack of novelty and inventive step.