T 0592/17 - Need to substantiate carry-over AR's

Key points

•  " The appellant [opponent] requested that auxiliary request 5 not be admitted into the proceedings" under Art.12(4) RPBA 2007, in particular on the argument that the filing of AR-5 fails to meet the requirement of Art.12(2) RPBA 2007 that respondent's reply shall contain the respondent's complete case and set out clearly and concisely why the decision under appeal be amended or upheld and should specify all the facts, arguments and evidence relied on.
• " With the reply to the grounds of appeal, while identifying the amendments made in auxiliary requests 1 to 4 (point 2 of the reply), the respondent [patentee] did not provide any substantive arguments concerning the subject-matter of the claims of auxiliary request 5, let alone regarding the relevance of [the amended feature] in claim 1 of auxiliary request 5, the set of claims of which was first filed on 26 August 2021. More specifically, no arguments were submitted in the reply to the grounds of appeal as to why the subject-matter of auxiliary request 5 would overcome the objections of added subject-matter, novelty and inventive step raised by the appellant in the grounds of appeal, nor was any such argument self-evident. The respondent simply stated that it requested alternatively that the patent be maintained "based on Auxiliary Request 7 as filed during opposition proceedings"." 
• " During the oral proceedings, the respondent submitted that the claims of auxiliary request 5 were identical to the claims of auxiliary request 7 filed on 10 October 2016 before the opposition division and the amendments made in the latter request were substantiated during the proceedings before the opposition division which was sufficient." 
• " The board does not agree that a substantiation presented during proceedings before the opposition division is sufficient for the purposes of Article 12(2) RPBA 2007. It is established Case Law of the Boards of Appeal that a mere reference to a party's earlier submissions made during the proceedings before the opposition division is not sufficient as a submission in reply to a statement of grounds of appeal (see e.g. T 1311/11, reasons 19). In the present case, not even a reference to a substantiation made during the proceedings before the opposition division was provided in the reply to the appeal. Rather, the respondent's submission was limited merely to a statement that the auxiliary request was maintained. Since the relevance of the amendment of claim 1 of auxiliary request 5 was not substantiated, the respondent failed to submit its complete case in accordance with Article 12(2) RPBA 2007 and, hence, the board did not need to take this request into account in the appeal proceedings under Article 12(4) RPBA 2007. "
  
• Assuming for the moment that AR-7 at issue was admissibly filed before the OD, the question is if the "unless clause" of Art.12(4)(s.1) RPBA 2020 would mean that no substantiation is required in appeal, because then AR-7 was no case amendment in the sense of Art.12(4)(s.1) and Art.12(4) RPBA, s.3 and s.4 do not apply, as confirmed expressly for s.3 by Expl. Rm. 12(4), and as logically also being the case for s.4. ("s." referring to sentences, so the third and fourth sentence; Expl. Rm. being the Explanatory Remarks as can be found in OJ 2020 SP2).
  
  
• As a minor quibble, the Board states: "Under Article 12(4) RPBA 2007 (applicable to the present case pursuant to Article 25(2) RPBA 2020, the reply to appeal having been filed before 1 January 2020)", but only the date of filing the SoG is relevant, the reply must only have been filed "in due time" according to Art.25(2). 

EPO T 0592/17

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/t170592eu1.html

11.1 The appellant requested that auxiliary request 5 not be admitted into the proceedings.

11.2 Under Article 12(4) RPBA 2007 (applicable to the present case pursuant to Article 25(2) RPBA 2020, the reply to appeal having been filed before 1 January 2020) the board, without prejudice to the power to hold inadmissible certain facts, evidence or requests, takes into account everything presented by the parties in the statement of grounds of appeal and the reply if and to the extent it relates to the case under appeal and meets the requirements under Article 12(2) RPBA 2007.

Article 12(2) RPBA 2007 stipulates inter alia that the statement of grounds of appeal and the reply shall contain a party's complete case and set out clearly and concisely why the decision under appeal be amended or upheld and should specify all the facts, arguments and evidence relied on.

As set out above, claim 1 of auxiliary request 5 refers to aluminum flake pigments defined with only one thickness of 10 to 80 nm. With the reply to the grounds of appeal, while identifying the amendments made in auxiliary requests 1 to 4 (point 2 of the reply), the respondent did not provide any substantive arguments concerning the subject-matter of the claims of auxiliary request 5, let alone regarding the relevance of the aluminum flake pigments defined with the thickness of 10 to 80 nm and the feature "coating layer A' is cured prior to application of a further coating layer" comprised in claim 1 of auxiliary request 5, the set of claims of which was first filed on 26 August 2021. More specifically, no arguments were submitted in the reply to the grounds of appeal as to why the subject-matter of auxiliary request 5 would overcome the objections of added subject-matter, novelty and inventive step raised by the appellant in the grounds of appeal, nor was any such argument self-evident. The respondent simply stated that it requested alternatively that the patent be maintained "based on Auxiliary Request 7 as filed during opposition proceedings".

11.3 During the oral proceedings, the respondent submitted that the claims of auxiliary request 5 were identical to the claims of auxiliary request 7 filed on 10 October 2016 before the opposition division and the amendments made in the latter request were substantiated during the proceedings before the opposition division which was sufficient. In relation to the substantiation, the respondent also referred to its submissions presented on appeal.

The board does not agree that a substantiation presented during proceedings before the opposition division is sufficient for the purposes of Article 12(2) RPBA 2007. It is established Case Law of the Boards of Appeal that a mere reference to a party's earlier submissions made during the proceedings before the opposition division is not sufficient as a submission in reply to a statement of grounds of appeal (see e.g. T 1311/11, reasons 19). In the present case, not even a reference to a substantiation made during the proceedings before the opposition division was provided in the reply to the appeal. Rather, the respondent's submission was limited merely to a statement that the auxiliary request was maintained.

11.4 Since the relevance of the amendment of claim 1 of auxiliary request 5 was not substantiated, the respondent failed to submit its complete case in accordance with Article 12(2) RPBA 2007 and, hence, the board did not need to take this request into account in the appeal proceedings under Article 12(4) RPBA 2007. Only in the letter dated 26 August 2021, i.e. two months prior to the oral proceedings, was the claim request addressed as to its merits, but confined to an explanation as to where basis in the application as filed could be found and to the statement that novelty and inventive step should be acknowledged for the same reasons as for the main request (see point 8 of said letter). These submissions were presented at an extremely late stage of the appeal proceedings and, in addition, the amendments further distinguishing claim 1 from claim 1 of the main request had not been addressed at all. This resulted in both the board and the appellant being left in the dark as to the purpose of this claim request and how it was intended to overcome the grounds for opposition raised by the appellant.

11.5 In view of the foregoing, the board decided not to admit auxiliary request 5 into the appeal proceedings in accordance with Article 12(4) RPBA 2007 and Article 13(1) and (2) RPBA 2020.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked