T 1241/18 - (III) Repeating arguments was enough

Key points

•  The OD decides to maintain the patent as granted. The opponent appeals. The question is whether the appeal is admissible, in particular whether the Statement of grounds is sufficiently substantiated.
• The Board: " the sole fact that a statement of grounds of appeal contains a repetition of arguments provided before the opposition division as such is not sufficient for the appeal to be considered insufficiently substantiated. " 
• " The board is convinced that, in the present case, the first instance proceedings and more specifically the decision under appeal did not give rise in any way to the necessity for an adapted line of argumentation or a focused discussion of particular reasons given in the decision under appeal." 
• " the board observes that the relevant parts of the decision under appeal contain a summary of the parties' arguments followed by the opposition division's opinion. The appellant's arguments provided in the statement of grounds of appeal are clearly consistent with the arguments that were taken into account by the opposition division." 
• " In the present case, the decision under appeal did not contain anything that would have given the appellant reason to correct or adapt their line of argumentation or to expressly discuss certain views adopted by the opposition division. The repetition of the substantial arguments already put forward in the first instance proceedings therefore was a justified reaction to the decision under appeal in the specific case, which served the purpose of convincing the board." 
• " point 15.2 of the reasons for the decision under appeal consists largely of a repetition of the parties' arguments, while the opposition division expressed their own opinion on novelty of the subject-matter of claim 1 merely in a single paragraph on page 6. An even shorter paragraph of the division's reasoning on novelty of the subject-matter of claim 4 is present on page 7." 
• " The statement of grounds of appeal provided detailed and well-reasoned arguments on the points that were discussed in the decision under appeal, namely novelty of the subject-matter of claims 1 and 4 over D6 and inventive step of the subject-matter of claims 1 and 4 in view of D7. " 
• " The board has therefore come to the conclusion that the requirements of Article 108 EPC in conjunction with Rule 99(2) EPC are fulfilled." 
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EPO T 1241/18

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/t181241eu1.html

Reasons for the Decision

1. Admissibility of the appeal

1.1 The appeal is admissible within the meaning of Article 108 EPC in conjunction with Rule 99(2) EPC. In particular, the statement of grounds of appeal are sufficiently substantiated to satisfy the requirements of Rule 99(2) EPC.

1.2 It might be true that the statement of grounds of appeal in the case at hand do not explicitly refer to specific parts of the decision under appeal and comprise to a large extent a repetition of a line of argumentation that was provided in an identical form before the opposition division.

1.3 In this context, the board first notes that an explicit reference to the specific reasons provided in the decision under appeal cannot be considered as a mandatory requirement in order to establish a causal relationship between the arguments in the statement of grounds of appeal and the reasons given in the decision under appeal. Rather, a corresponding causal relationship can result without an explicit reference, which the board considers to be the case here.

1.4 Furthermore, the sole fact that a statement of grounds of appeal contains a repetition of arguments provided before the opposition division as such is not sufficient for the appeal to be considered insufficiently substantiated. Rather, other factors must be taken into account in this context, in particular the question whether the nature of the first instance proceedings as well as the decision under appeal would have necessitated a correspondingly adapted line of argumentation on the part of the appellant or an explicit discussion of a specific reasoning provided by the opposition division in the decision under appeal.

The board is convinced that, in the present case, the first instance proceedings and more specifically the decision under appeal did not give rise in any way to the necessity for an adapted line of argumentation or a focused discussion of particular reasons given in the decision under appeal.

In this context, the board observes that the relevant parts of the decision under appeal contain a summary of the parties' arguments followed by the opposition division's opinion. The appellant's arguments provided in the statement of grounds of appeal are clearly consistent with the arguments that were taken into account by the opposition division.

1.5 Furthermore, as was correctly stated by the respondent, it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020). In the present case, the decision under appeal did not contain anything that would have given the appellant reason to correct or adapt their line of argumentation or to expressly discuss certain views adopted by the opposition division. The repetition of the substantial arguments already put forward in the first instance proceedings therefore was a justified reaction to the decision under appeal in the specific case, which served the purpose of convincing the board.

1.6 The board also considers the quality of the content of the statement of grounds of appeal in the present case as sufficient to understand the essential arguments. The statement of grounds of appeal provided detailed and well-reasoned arguments on the points that were discussed in the decision under appeal, namely novelty of the subject-matter of claims 1 and 4 over D6 and inventive step of the subject-matter of claims 1 and 4 in view of D7. Furthermore, the board observes that the respondent replied in detail to the observations provided in the statement of grounds of appeal and the board therefore cannot see that they had any difficulties to understand why the appellant, in contrast to the opposition division, was of the opinion that the subject-matter of claims 1 and 4 is not novel in view of D6 and does not involve an inventive step in view of D7.

1.7 The findings in appeal case T 2012/16 cited by the respondent are not applicable to the present case, as the circumstances of that case were different. In particular, the board does not see that the statement of the grounds of appeal in the present case makes it difficult to immediately understand why the decision under appeal was considered to be incorrect and on what facts the appellant based their arguments. In particular, the board did not need to conduct their own investigations in the present case, which would go beyond the usual level of investigation to be expected.

1.8 Appeal case T 1311/13, also cited by the respondent, is concerned with the question of whether a specific ground of appeal is sufficiently substantiated (reasons 19). This decision therefore concerns a different issue, in particular one that is not readily applicable to the present case, which is concerned with the question of whether the statement of grounds of appeal fulfils the requirement of Rule 99(2) EPC, according to which the appellant shall indicate the reasons for setting aside the decision under appeal and the facts and evidence on which the appeal is based. The board therefore does not consider the respondent's arguments in this respect relevant to the present case.

1.9 Nor is it apparent that a particularly detailed reasoning of the opposition division would have required an increased level of detail of the statement of grounds of appeal. In fact, point 15.2 of the reasons for the decision under appeal consists largely of a repetition of the parties' arguments, while the opposition division expressed their own opinion on novelty of the subject-matter of claim 1 merely in a single paragraph on page 6. An even shorter paragraph of the division's reasoning on novelty of the subject-matter of claim 4 is present on page 7.

1.10 The board has therefore come to the conclusion that the requirements of Article 108 EPC in conjunction with Rule 99(2) EPC are fulfilled. Given that the further requirements under Rule 101(1) EPC are also fulfilled, the appeal is admissible.