T 0501/15 - Addressing all grounds

Key points

• In this opposition appeal, the Board decides that proprietor's appeal is admissible. The patentee with the Statement of grounds no longer defends the main request but only the auxiliary requests. 
• "These requests were held in the [OD's] decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests."
• Therefore, it was sufficient to defend in the Statement of grounds that these requests meet Article 123(2) and 84 EPC. 
" Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.
• The Board considers decision T1045/02 to be different because in that case, the (Form 2061) refusal effectively included a rejection for lack of novelty of claim 2 which was defended in appeal.
• " In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds." 
• The Board adds that:  "Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases." I'm not sure how accurate this is. I think that case law holds that a Statement of ground must rebut all grounds for rejecting the request (or attack of opponent) at issue. 

EPO T 0501/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The admissibility of the proprietor-appellant's appeal is contested, because according to the respondent it would fail to address the grounds of novelty and sufficiency that were part of the impugned decision.

1.2 The decision indeed concludes that the main request is not allowable on the grounds of novelty and sufficiency. However, the appellant does not pursue the main request but rather the auxiliary requests 1 to 6, which have been re-filed together with a further new auxiliary request 7 with the statement of grounds. These requests were held in the decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests.

The grounds of appeal contain, in relation to each of the above auxiliary requests, arguments relating to the reason that lead the opposition division to hold that request not allowable (see e.g. page 2, reasons for compliance of the first auxiliary request with Art. 84 and 123(2) EPC, and on page 3 the issue of added subject-matter against the amended first auxiliary request). Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.

1.3 The respondent furthermore refers to the case law and in particular to the decision T 1045/02 to support his view that the statement of grounds failed to meet the minimum requirements in that it dealt with only one of several grounds. The decision is quoted in the passage of the case law explaining the general principles that the examination of whether the requirements of Art. 108, third sentence, EPC are met, has to be made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, and that whether a statement of grounds meets the requirements of Article 108 and Rule 99(2) EPC 1973 can only be decided on a case-by-case basis (Case Law of the Boards of Appeal, 8th edition 2016 (CLBA) IV.E.2.6.3, in particular that the statement of grounds are to be analysed vis-à-vis reasons in the decision (CLBA IV.E.2.6.3 b)).

1.4 Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases. Indeed T 1045/02 itself refers to these principles, see 1. of the Reasons. In the present case the Board has applied the general principle and considered both the statement of grounds and decision under appeal and found that, for the relevant requests of the present appeal, the impugned decision considered only added subject-matter and clarity, and that both issues are addressed in the statement of grounds. Both issues are moreover addressed to a degree that requires little or no effort on the part of the Board or the other party to understand why the appellant considers that the decision is wrong in its findings on these issues, nor indeed has this been argued.

1.5 In addition, the Board does not find the case considered in T1045/02 cited by the respondent to be sufficiently analogous to the present case. That case concerned an appeal against a decision by the examining division according to the state of the file where not the decision itself but the relevant communications contained the novelty and clarity objections. There, for amended claims of a main request filed in appeal the statement of grounds of appeal only addressed lack of clarity. However, the file itself contained an indication from the examining division that importing the subject-matter of claim 2 would not make claim 1 novel, see 3. of the Reasons in T 1045/02. In other words, the decision was seen as containing reasons on the issue of novelty for a relevant claim. In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds.

1.6 The Board thus concludes that the appeal is admissible pursuant Article 108, third sentence, and Rule 99(2) EPC.