T 1076/21 - (I) Burden of proof in appeal

Key points

• This post serves to give an impression of the decision rather than a summary. I recommend reading the entire decision to interested readers.
  
•  "With reference to T 585/92, Reasons 3.2, the respondent argued that the appellant bore the burden to prove that the patent was sufficiently disclosed because the opposition division had revoked the patent."
• "On the basis of an in-depth analysis of the relevant case law, the board has concluded that the burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."
• "the initial burden on the opponent to provide facts, arguments and evidence for an assertion of an insufficient disclosure (in the following: "burden of proof on the substance") may shift to the patent proprietor once the opponent has successfully discharged its burden of proof by submitting sufficient facts, arguments and evidence to rebut the presumption of sufficiency resulting from the information contained in the patent specification (T 338/10, Reasons 12; T 2218/16, Reasons 32.2)."
• "Linked to the burden of proof is the "burden to substantiate a case" (Rule 76(2)(c) EPC in opposition proceedings; Rule 99(2) EPC and Article 12(3) RPBA in appeal proceedings). Thus, the opponent first has to provide facts and argue why these facts support the assertion that a skilled reader of the patent using their common general knowledge would be unable to carry out the invention (T 182/89, Reasons 2). This burden to substantiate facts and arguments is then followed by the burden to prove these facts, which is normally done by submitting evidence."
• Note that even though evidence needs to be indicated only in a notice of opposition, the picture of substantiation followed by evidence appears to relate more to a conceptual framework than to the real chronology of events in typical opposition proceedings. Usually evidence is submitted with the notice of opposition.
  
• "when distinguishing the "burden to substantiate a case" from the "burden of proof on the substance" it can be clearly deduced from the case law that after a decision by the opposition division allowing an objection of insufficiency, it is down to the patent proprietor to substantiate on appeal why that decision is wrong. "
• "Under Article 12(3) RPBA, the statement of grounds of appeal has to set out clearly and concisely the reasons for setting aside the decision under appeal. The appellant (in this case the patent proprietor) therefore bears the burden to substantiate the appeal. Yet an appeal case need not necessarily be substantiated by submitting facts and evidence that counter the arguments and evidence presented by the opponent. It may also be substantiated by submitting why the opposition division's reasoning on insufficiency was flawed "
• "T 1911/17, Reasons 24, sets out that the burden to substantiate the appeal must be distinguished from the burden of proof on the substance. The fact that the decision under appeal may be wrong for reasons other than a misjudgement on the substance can be deduced from e.g. decision T 942/18 (Reasons 2.2 to 3.6), T 55/18 (Reasons 1.2 and 2.2) or T 1596/16 (Reasons 2.3)."
• "An appeal against a revocation of a patent for insufficient disclosure need not be based on the submissions of counter-evidence by the patent proprietor, as can also be seen in cases where the opposition division's decision was set aside. In many cases the board based its decision not on new evidence but on other arguments why the impugned decision was erroneous."
• "The respondent [opponent] therefore did not provide the evidence required for substantiating serious doubts; it did not discharge its burden of proof on the substance " - in the first instance proceedings, I understand.
• The opponent filed a declaration after the summons in appeal.  "The joint expert declaration of Annex 1 contains images from scientific documents which are not part of the proceedings, along with in-house experiments."
• The Board does not admit it. There are no exceptional circumstances. "a board agreeing with the other party's arguments does not amount to exceptional circumstances; this may happen and has to be expected in any inter partes proceedings. Therefore, this evidence should have been filed in the opposition proceedings or at the latest with the reply to the appeal".

EPO 

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

https://www.epo.org/en/case-law-appeals/decisions/recent/t211076eu1