T 0308/17 - Need to substantiate carry-over requests

Key points

• This decision was issued in March 2020, but the Enlarged Board in July 2022 rejected the petition for review concerning it. (Entry in the EP phase in 2007, incidentally).
• In this opposition appeal, the opponents appeal. "With the reply to the appellants' statements of grounds of appeal, the respondent [patentee] submitted a main request and auxiliary requests I to XVIII. The main request corresponded to the request considered allowable by the opposition division. Auxiliary requests I to XVIII were filed for the first time in the appeal proceedings."
• The phrase "were filed for the first time" may require some analysis but seems not essential for the Board's reasoning.
• The patentee argued that: "essentially the same claim requests had been filed before the opposition division and had been substantiated then, being aimed at overcoming the novelty objections with regard to document D1."
• The interesting issue is the admissibility of Auxiliary Request X.
• The Technical Board, on the admissibility of Auxiliary Request X: "The case law of the Boards of Appeal has consistently held that this requirement [of Article 12(2) RPBA 2007] is not met if claim requests are not substantiated, except if the amendments made are self-explanatory. It has also held that requests that are not self-explanatory are to be considered as submitted only on the date of their substantiation "
• "[The appeal procedure is] 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"
• "Since the respondent's reply to the statements of grounds of appeal contains no explanation relating to the auxiliary requests, beyond the statement that "all of these requests address the newly raised objections against claims 20 to 22", the board can only hold that the amendment made to claim 1 in auxiliary request X was not substantiated therein. In view of the above mentioned case law (see point 19.), it is not relevant whether or not the claim requests were substantiated in the proceedings before the opposition division. It remains to be decided whether or not the amendments made to claim 1 are self-explanatory as suggested by the respondent (see section XXI. above)."
• " Contrary to the respondent's position, it was not self-explanatory which objections were addressed by each of the numerous amendments of claim 1 of the request (see section XI), i.e. whether it was lack of novelty or inventive step or any other objection raised in the statements of grounds of appeal against claim 1 of the main request (see sections IV and V) nor why the amendments would overcome any of these objections."
• See, similarly, T 0238/19.

EPO T 0308/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170308eu1.html

Auxiliary request X

Admissibility - Articles 12(2), 12(4) and 13 RPBA

17. Article 12(2) RPBA stipulates that "The statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on".

18. The case law of the Boards of Appeal has consistently held that this requirement is not met if claim requests are not substantiated, except if the amendments made are self-explanatory. It has also held that requests that are not self-explanatory are to be considered as submitted only on the date of their substantiation (see the Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, V.A.4.12.5).

19. Furthermore, it is established case law that parties to an appeal cannot rely on submissions made before the first instance, since 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)" (Id. at V.A.1.1). Neither this case law nor its applicability to the case at hand was disputed by the respondent.

20. Since the respondent's reply to the statements of grounds of appeal contains no explanation relating to the auxiliary requests, beyond the statement that "all of these requests address the newly raised objections against claims 20 to 22", the board can only hold that the amendment made to claim 1 in auxiliary request X was not substantiated therein. In view of the above mentioned case law (see point 19.), it is not relevant whether or not the claim requests were substantiated in the proceedings before the opposition division. It remains to be decided whether or not the amendments made to claim 1 are self-explanatory as suggested by the respondent (see section XXI. above).

21. The board notes that no case has been made in writing why amended claim 1 is allowable. Contrary to the respondent's position, it was not self-explanatory which objections were addressed by each of the numerous amendments of claim 1 of the request (see section XI), i.e. whether it was lack of novelty or inventive step or any other objection raised in the statements of grounds of appeal against claim 1 of the main request (see sections IV and V) nor why the amendments would overcome any of these objections.

22. The submissions of the respondent (i.e. the amended claim request itself) do not suffice to place neither the board nor the other parties in a position to understand the rationale behind the request. Thus the requirements of Article 12(2) RPBA which stipulates that parties to appeal proceedings should present their complete case [...] and should specify expressly all arguments relied on are not met.

23. Article 12(4) RPBA provides that, without prejudice to the power of the board to hold inadmissible facts, evidence or requests which could have been presented in the first-instance proceedings, everything presented by the parties pursuant to Article 12(1) RPBA, i.e. in inter partes proceedings, the notice(s) of appeal, the statement(s) of grounds of appeal and any timely filed written reply of the other party or parties, shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA.

24. The board, in line with the established case law (Id. at V.A.4.12.5), concludes that it has discretion over whether or not to hold inadmissible claim requests which fail to meet the requirements in Article 12(2) RPBA.

25. Furthermore, substantiation of the auxiliary request for the first time at the oral proceedings constitutes an amendment of the case previously presented, admissibility of which needs to be assessed applying Articles 13(1) and 13(3) RPBA. Admitting such a late substantiated request would have necessarily extended the scope of discussion as determined by the grounds of appeal and the respondent's reply to newly presented facts, evidence and arguments, not just concerning novelty, but also inventive step, for which neither the other parties or the board could have been properly prepared. The admission of the auxiliary request therefore would have necessitated adjournment of the oral proceedings (Article 13(3) RPBA) as the case was likely to develop in unforeseen directions. The admission of the request would thus go against the need for procedural economy.

26. In view of the above considerations, the board decided not to admit auxiliary request X into the proceedings.