T 2361/15 - Admissible appeal based on non-admissible attack

Key points Is an appeal that only raises a fresh case admissible, or must the Statement of grounds assert that the reasoning of the impugned decision is incorrect in order for the appeal to be admissible? The Board finds that this appeal based on a fresh case is admissible. " The appeal of the appellant is solely based on an alleged public prior use filed for the first time with its statement of grounds." "In the present case the statement of grounds admittedly does not address the reasons given in the contested decision for rejecting the opposition"  "Bringing a fresh case in appeal does not automatically imply that the statement of grounds does not "indicate the reasons for setting aside the decision impugned". It is a sufficient condition that the statement of grounds of appeal enables the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments. In the judgment of the board, the statement of grounds meets this condition."  Then: is the new public prior use admissible? "Taking into account that documents E4 and E5 concern an alleged public prior use by the appellant [opponent] itself, lead the board to the finding that these documents could (and should) have been presented in the first instance proceedings."  The nice thing about an admissible appeal is that documents filed later in the procedure, can be admissible. In this case, an inventive step attack was late filed. Hence, because the non-admissible public prior use made the appeal admissible, the Board has to decide on admissibility of the later filed inventive step attack. Weird as this may seem, I think it is more fair than the approach of e.g. T 198/15 (here) and more sound than that of T 846/16. " In the case at hand, the submissions of the appellant with respect to a lack of inventive step were put forward at a late stage of the appeal proceedings and shift the focus to facts not previously mentioned in these proceedings. Under the present circumstances, fairness and economy of the procedure speak against the admission of the new submissions." The inventive step attack is not admitted.  EPO T 2361/15 - link

Reasons for the Decision

1. Admissibility of the appeal, Article 110 and Rule 101(1) EPC

1.1 Rule 101(1) EPC ("Rejection of the appeal as inadmissible") stipulates that "If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1(b) or (c) or paragraph 2, the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired".

Since the appeal concerns a decision of the opposition division (cf Article 106(1) EPC), is filed within the time limit specified in Article 108 EPC, first and second sentence, and since the time limit for filing the statement of grounds appeal specified in Article 108 EPC, third sentence, is also met, the appeal complies with Articles 106 and 108 EPC.

Under Article 107 EPC, any party to proceedings adversely affected by a decision may appeal. A party is adversely affected if the decision does not accede to its main request or to auxiliary requests preceding the allowed auxiliary request. In the present case the appellant's main request in the opposition proceedings was that the patent be revoked. The appellant was thus adversely affected by the decision under appeal, by which its opposition against European patent No. 2 284 422 was rejected.

1.2 The notice of appeal contains the name and the address of the appellant (cf Rule 99(1)(a) EPC), an indication of the decision impugned (cf Rule 99(1)(b) EPC), and a request defining the subject of the appeal (cf Rule 99(1)(c) EPC).

1.3 Rule 99(2) EPC provides that "In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based".

The appeal of the appellant is solely based on an alleged public prior use filed for the first time with its statement of grounds.

In the present case the statement of grounds admittedly does not address the reasons given in the contested decision for rejecting the opposition, since the appellant has introduced a fresh case concerning the same ground for opposition (Article 100(a) EPC in combination with Article 54 EPC).

The respondent has submitted that according to the case law of the Boards of Appeal the statement of grounds should specify the legal or factual reasons on which the case for setting aside the decision was based and that the statement of grounds of the appellant did not contain such reasons, thereby suggesting that the statement of grounds contravenes the requirements of Rule 99(2) EPC.

Bringing a fresh case in appeal does not automatically imply that the statement of grounds does not "indicate the reasons for setting aside the decision impugned". It is a sufficient condition that the statement of grounds of appeal enables the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments.

In the judgment of the board, the statement of grounds meets this condition.

It follows that the statement of grounds of the appellant meets the requirements of Rule 99(2) EPC.

1.4 The appeal of the appellant is therefore admissible, cf Rule 101(1) EPC.