T 0618/23 - Pages 120-125 of the SoG do the job

Key points

• The OD decided to maintain the patent in amended form based on AR-25a. Both parties appeal.
• The Board, in machine translation: "the patent proprietor argued, among other things, that the opponent's statement of grounds of appeal, contrary to Article 12(3) of the Rules of Procedure of the Boards of Appeal, did not clearly and concisely explain why the contested decision should be set aside. Instead, it dealt with extraneous matters (such as the proceedings concerning the parallel German patent 10 2015 117 403 before the Federal Patent Court), addressed "an unmanageable number of different, partly equivalent lines of argument" and failed to provide a problem-solving approach for any of these lines of argument."
• "The Board notes, however, that the appellant has sufficiently explained, at least on pages 120 to 123 of the statement of grounds of appeal [ that had in total 134 pages], why the contested decision should be set aside and, in particular, why claim 1 of granted auxiliary request 25a, based on E7 in combination with E13, does not involve an inventive step. While the appellant's submissions are extensive, they are nevertheless sufficiently substantiated. The mere fact that the statement of grounds of appeal contains a number of irrelevant statements alongside the arguments relevant to the decision does not render the appeal inadmissible."
• In the statement of grounds (SoG), the opponent first attacked the patent as granted (p. 11), citing extensive prior art that was no longer relevant for AR-25a (as I understand it). The opponent then addressed AR-1 (p. 84) and all subsequent auxiliary requests, eventually arriving at AR-25a on p. 120.
• In the opponent’s SoG, an attack against requests ranked higher than the auxiliary request held allowable by the OD is indeed an "irrelevant statement", according to the majority line of case law (as I understand it).


• The Board first deals with the claim requests in the proprietor’s appeal and then turns to the set of claims held allowable by the OD (and contested in the opponent’s appeal)."The Board concludes that the subject matter of claim 1, starting from E7 in combination with E13 and the general technical knowledge, does not involve an inventive step."
• The Board then turns to lower-ranking requests, where novelty over E2 becomes an issue. I have not studied this part of the decision in detail.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 2149/22 - Offering to cancel independent claims

Key points

•  The OD revoked the patent. The proprietor appeals. In translation: "the patent proprietor as appellant requests [in the statement of grounds], in the alternative, that the patent be maintained to the extent of auxiliary request 1 [], or, further, in the alternative, "to the extent  the independent patent claims and the corresponding dependent claims are considered to be new and inventive" ("im Umfang der als neu und erfinderisch angesehenen unabhängigen Patentansprüchen und den davon abhängigen Unteransprüchen"). 
• The proprietor does not submit the written-out auxiliary requests with the statement of grounds.
• The Board; "The request for maintenance in the scope of the independent patent claims considered to be new and inventive and the dependent subclaims, which was filed with the statement of grounds of appeal [] comprises in the present case seven possible combinations of independent claims, namely (a) independent claims 1, 2 and 6 of auxiliary request 1, b) independent claims 1 and 2, c) independent claims 1 and 6, d) independent claims 2 and 6, e) only independent claim 1, f) only independent claim 2, or g) only independent claim 6."
• AR-2 was filed during the oral proceedings before the Board and directed to combination d) of the above list, i.e. original claims 2 and 6 which were independent claims in the patent as granted. 
• "The board considers it excessive formalism to require in the present case that fully worded auxiliary requests directed at the seven possible combinations mentioned above should have been filed with the statement of grounds of appeal."
• Note, this is the reason why the Board considers Art. 12(3) RPBA ("specify expressly all requests" to be complied with. 
• "Thankfully, in the present case the opposition division, after finding that claim 1 of auxiliary request 1 lacked novelty, also examined the requirements of novelty and inventive step for its other independent claims 2 and 6, see paragraphs 6-9 of the contested decision. Therefore, the subject matter of the appeal proceedings has already been fully dealt with by the opposition division and neither the parties nor the board have to deal with substantively new arguments that have not yet been dealt with in the previous proceedings. "
• Note, this is the reason why it is no case amendment in the sense of Art. 12(4). It is unclear to me if the OD considered claims 2 and 6 to be allowable and/or how the parties presented their arguments on those claims in appeal. 
• "Therefore, in the exercise of its discretion under Article 114(2) EPC and Article 13(1)RPBA, the board decided to admit auxiliary request 2". 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1220/21 - A tutorial on Art. 12(3) RPBA

Key points

• A carry-over auxiliary request [*] was re-submitted with the reply of the proprietor/respondent. The basis for the amendments was indicated in a marked-up copy of the claims. The Board, in the end, considers this insufficient because references were made to paragraph numbers.  "In fact, the description as originally filed does not even include numbered paragraphs, so the reference to "[SP [0056]]" (probably also the reference to claim 5) is either wrong or refers to the patent as granted rather to the application as filed".
• * =  i.e. an auxiliary request that is lower ranking that the claim request that was held to be allowable by the OD./
• The Board first confirms established case law that requests that benefit from the unless clause of Art. 12(4)(s.1) RPBA must be substantiated in appeal under Art.12(3), and adds that this involves indicating the basis for the amendments by analogous application of Art. 12(4)(s.4).
• "According to Article 12(3) and (5) RPBA 2020, a lack of or an insufficient substantiation of an amended request may lead to the non-admittance of this request. This does however not imply that the request has not been validly filed" (note that Art. 12(5) indeed mentions this discretion).
• "The admittance of an amended request which is not expressly substantiated pursuant to Article 12(3) RPBA 2020 is at the discretion of the Board under Article 12(5) RPBA, even if the amendments are self-explanatory". The reason is that "an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on (T 2598/12, reasons 1.10)" Art.12(3) requires a substantiation and requires parties to specify expressly the arguments relied on, which is not complied with by an implicit argument. The Board adds that the self-explanatory nature of the amendments will be a factor to consider when deciding on whether to admit the claim request.
• I'm unsure about this reasoning. Any appeal case relies on a large number of technical/scientific arguments/facts which are implicit but evident to the skilled person as common general knowledge. Article 12(3) can not be interpreted to require that self-evident arguments/facts are spelled out in the appeal submissions. 
• "The substantiation of an amended request under Article 12(3) RPBA 2020 includes the primary duty of the proprietor to indicate the basis for the amendments in the application as originally filed, even if no objection under Article 123(2) EPC has been previously raised" (the possibility of previously raised objections applies to carry over requests).
• The Board is not in favour of annexes. "Information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as sufficient substantiation pursuant to Article 12(3) RPBA 2020".
• Turning to substantiation of amended claims in general: "(b) If a claim request is intended to overcome novelty or inventive step objections, the proprietor should at least identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20, reasons 2.1). According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5).

• (c) However, the specific extent and detail of the explanations required to substantiate a claim request cannot be determined in an absolute or precise manner. This may depend on the level of detail and accuracy of the objections to be overcome in the impugned decision or as raised by the opponent (see T 1659/20, reasons 2.1). Moreover, the required degree of substantiation is not static, but might depend on how the corresponding objections evolve.'

• "The purpose of Article 12(3) RPBA 2020 is to ensure that the relevant submissions are present in the proceedings as early as possible to enable the Board and the other party(ies) to start working on the case on the basis of the parties' complete submissions (Case Law of the Boards of Appeal, 10th edition, V.A.4.3.5 a)) without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective is a factor that may be taken into account when exercising the discretion under Article 12(5) RPBA 2020 (T 1659/20, reasons 2.1). This includes addressing the question of whether the amendments and the chain of logic underlying the claim requests are self-explanatory."

• I recommend reading the entire decision.

• The headnote seems to add a few points that can not be found (literally) in the reasoning itself.

EPO 

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

T 1118/22 - The opponent's reply

Key points

• An important lesson today for any opponent as a respondent: don't forget to broaden the appeal in your appeal reply brief by raising all possible objections and completely substantiating these objections by writing them out in full in the reply itself.
• The OD found the claims to be not novel over D9. The proprietor appeals, arguing that the claims are novel (and inventive, presumably) over D9. The opponent files a reply.
• The Board considers the claims to be novel and inventive over D9.
• In translation: " In its response to the appeal, opponent 1 referred to a lack of novelty of the subject matter of claim 1 compared to the respective teaching of documents E18, E19, E12, E15, E4, E5, E7, E10 and E16 and a lack of inventive step based on the teaching of documents E12, E19, E8, E11, E13 and E17 as set out in the written submissions of both opponents in the opposition proceedings. It justified the mere reference to the arguments in the opposition proceedings by saying that the contested decision of the opposition division did not contain any findings on these objections raised in the opposition proceedings and that the patent proprietor itself addressed these objections in the statement of grounds of appeal and in doing so merely repeated its arguments from the opposition proceedings and consequently bring forward nothing substantially new. Furthermore, opponent 1 reserved the right to supplement its submissions as necessary and/or requested."
• The full attacks were submitted with a letter of 29.07.2023, i.e. after the summons. The attacks are not admitted under Art. 12(3) RPBA 2020.
• The Board in translation "mere reference to the objection submissions cannot therefore replace appropriate reasons in the appeal proceedings. Rather, the completeness of the appeal submissions, which is still required by Article 12(3), sentence 1 and sentence 2, second half, RPBA, is necessary because it cannot be the board's task to investigate which of the arguments from the opposition proceedings remain relevant."

EPO 

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

T 1109/18 - Auxiliary requests and SoG Patentee

Key points

• Both the opponent and the patentee appeal.
• The OD found the claims of an auxiliary request to be allowable. Some further, lower-ranking, auxiliary requests were pending before the OD, but the OD did not arrive at them.
• Should the patentee comment on those lower-ranking auxiliary requests in its Statement of grounds (and, for that matter, resubmit or present them in appeal in the SoG)?
• The Board in this case finds that this is not necessary. It is sufficient (and necessary) if the patentee introduces those auxiliary requests in its appeal reply brief as respondent.
• The Board: "Not filing the main request already with its own grounds of appeal, but only in reply to the opponents' grounds of appeal, cannot be considered as the abandonment of this claim request. The main request was filed with the reply to the opponents' grounds of appeal and thus in compliance with Article 12(3) RPBA 2020, which explicitly stipulate that the statement of grounds of appeal and the reply are to contain a party's complete appeal case. "
• Note that auxiliary requests that are higher-ranking than the claims held allowable by the OD must be presented in appeal by the patentee with its SoG.
• Note that the opponent accordingly should file a rejoinder to the patentee's appeal reply brief setting out all its objections to all auxiliary requests presented in the patentee's appeal reply brief.

EPO 

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

T 0239/20 - (I) Complete appeal case

Key points

• The OD finds the operative claim to be novel over the asserted public prior use by two features of the claim. The opponent addresses those features in its Statement of grounds.
• " the patent proprietor argued [...] that the appeal case of the opponent was not complete with respect to the lack of novelty of the subject-matter of claim 1 in view of Triumph and had to be held as inadmissible. In particular, the statement of grounds of appeal of the opponent addressed only the features of claim 1 which the Opposition Division found as not being disclosed by Triumph. However, for an appeal to be successful, it was not sufficient to identify where the department of first instance incurred an error of judgement. The appellant had also in line with Article 12(3) RPBA 2020 to set out the facts, evidence and arguments why the decision under appeal must be reversed. Accordingly, the opponent had also to specify where all remaining features of claim 1 were disclosed by the child car seat Triumph in order for the outcome of the decision to be reversed."  (according to patentee)
• "Article 12(3) RPBA 2020 stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on" 
• The Board: "The opponent in the statement of grounds of appeal contested the decision of the Opposition Division in this regard and indicated the reasons why the findings of the Opposition Division were not correct and the decision under appeal should be amended (see points [100] to [170] of the statement of grounds of appeal of the opponent). Consequently, the statement of grounds of appeal of the opponent fulfills the requirements set out under [...] Article 12(3) RPBA 2020, since the Opposition Division did not explicitly reason which other features the car seat Triumph did not disclose. Accordingly, the novelty objection over Triumph is part of the contested decision and also part of the current appeal proceedings because the opponent challenges the decision in that respect." 
• " If the patent proprietor further were to contest in view of the statement of grounds of appeal of the opponent that other features of claim 1 than those identified in the impugned decision were not disclosed by Triumph, these alleged facts belong to the patent proprietor's complete appeal case and should accordingly be expressly specified in the reply to the statement of grounds of appeal of the opponent." 
• For what seems to be the opposite approach, see T 2253/16, r.2.5.4 where the opponent/appellant had only engaged with the distinguishing feature identified by the opposition division. The attack was inadmissible under Art. 12(3) RPBA 2020. "Es fehlt vielmehr eine Analyse des Dokuments D4, aus der hervorgeht, wo die Beschwerdeführerin welche Anspruchsmerkmale offenbart sieht." (i.e. a complete analysis of how D4 taught all features of the claim was required by the Board in that case.)
  
• As a comment, in the present decision T 0239/20, the OD only identified the distinguishing features in the decision (here, p. 17) and did not spell out in the decision how the device of the public prior use disclosed the other features of the claim. 

EPO 

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

T 0354/20 - Both parties' failure to properly present in writing their case

Key points

•  The Board remits a case, adding that  "The Board notes that the reasons for this situation are mainly due to both parties' failure to properly present in writing their case in respect of the auxiliary requests." 
• Taking a step back: The OD maintained the patent as granted. The opponent appeals. The Board  finds the main request to be not novel. "From the above it follows that the respondent's main request to maintain the patent as granted fails and that the decision under appeal is to be set aside. The respondent (patent proprietor) filed 19 auxiliary requests with the reply to the statement of grounds of appeal. Auxiliary requests 1 to 12 and 14 to 19 were already filed during opposition proceedings. As the opposition was rejected, none of the issues concerning the auxiliary requests were part of the impugned decision."
• " With the reply to the statement of grounds of appeal, filed on 22 October 2020, the respondent [patentee] explained what were the amendments made in accordance with the auxiliary requests and stated in very general terms that the auxiliary requests were submitted in response "to the opponent's objection concerning an alleged lack of novelty and inventive step of the main request"." 
• " The appellant [opponent] filed comments on the auxiliary requests with letter dated 24 March 2021, i.e. about three months after the summons to oral proceedings, which was issued on 18 December 2020, i.e. about 2 months after the reply to the statement of grounds of appeal was filed, and in which it was pointed out (point 5) that the appellant did not file observations in respect of the auxiliary requests." 
• " the situation that arose at the oral proceedings when the Board announced after deliberation that it considered that the main request was not allowable for lack of novelty, was that - possibly apart for auxiliary requests 1 to 6 - there was no case made by the parties in advance of the oral proceedings as to why the auxiliary requests would or would not overcome the lack of novelty." 
• " Consequently, assuming that some of the requests would be admitted into the proceedings, the Board was put in the position to either allow the parties to present their arguments on novelty and/or inventive step for the first time at the oral proceedings or else not admit any argument not presented in writing. In the former case, this might have led to a new discussion at the oral proceedings, possibly with unexpected twists. In the latter case, this might have led to the maintenance of the patent on pure formal reasons." 
• Or not admitting the requests and revoking the patent?
  
  
• As a comment, the unresolved key question is: should the opponent appealing against rejection of the opposition, address auxiliary requests pending before the OD in the SoG? Or can the opponent first wait whether the patentee maintains those auxiliary requests in appeal? In the former case, the failure was on the side of the opponent. In the latter case, the failure was on the side of the patentee who as respondent perhaps formally maintained the AR's in appeal, but without proper substantiation and hence not validly. This is, in my view, frankly not clear enough in the current RPBA. The Board does not provide clarity on this point but remits.

EPO T 0354/20 

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

T 1241/18 - (II) The patentee as respondent and auxiliary requests

Key points

•  The OD maintains the patent as granted and does not discuss the auxiliary requests filed by patentee in the first instance proceedings. The opponent appeals and logically only discusses the claims as granted. What should the patentee as respondent do in connection with the auxiliary requests, if they were filed without substantiation before the OD?
• The Board " In the present case, the opposition division's finding in the decision under appeal that the patent under appeal was to be maintained does not release the patent proprietor (respondent) from their obligation to also substantiate further requests. With the auxiliary requests, the respondent requests the maintenance of the patent in amended form, which is expressly covered by the wording of Article 12(2) RPBA 2007, according to which it must be explained on what grounds the patent is to be maintained in amended form. The respondent's "complete case" in the sense of Article 12(2) RPBA 2007, therefore, is to be considered to also refer to the auxiliary requests." [slight edits in quote]
• " As set out before, however, the respondent [patentee] has neither in the first instance proceedings nor in the reply to the appeal in any way argued on what grounds the auxiliary requests were deemed to overcome the appellant's objections." 
• " It is further to be noted that the appellant [opponent] in the statement of grounds of appeal not only objected to claim 1 of the main request but also presented arguments as to why the subject-matter of the dependent claims of the patent as granted was not patentable, and that at least some of the auxiliary requests were based on those claims. The board therefore does not agree with the respondent that neither the decision under appeal nor the statement of grounds of appeal gave rise to a detailed argument as regards the patentability of the auxiliary requests."
• The auxiliary requests are not admitted.
• The case is not remitted: " However, in the case at hand, the respondent's main request was not allowable and the first to fifth auxiliary requests were not admitted into the appeal procedure. There is thus no factual basis for a remittal of the case to the opposition division and the board consequently has decided to reject the respondent's request to remit the case to the department of first instance." 
• The patent is revoked.

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.

T 2158/15 - Unamended claims as granted inadmissible

Key points

• The patentee maintains the claims as granted, unamended, as main request throughout the proceedings. The Board holds these requests inadmissible in effect. As a question to the readers: what is the legal basis?
• The problem for patentee is that it is the appellant and the OD had revoked the patent. The patentee maintained the claims as granted as main request in the SoG but without substantiated comments why the OD's decision was wrong. Hence, the claims are disregarded under Art. 12(2) RPBA 2007 / Art. 12(3) RPBA 2020.
• The Board: “Zwar stellt sich die Frage der Zulassung des Hauptantrags im vorliegenden Fall nicht, da dieser dem Patent wie erteilt entspricht und der angefochtenen Entscheidung zugrunde liegt, und damit keine Änderung des Patents darstellt, die zuzulassen wäre. Allerdings ist im vorliegenden Fall darüber zu entscheiden, ob der Vortrag der Beschwerdeführerin zum Hauptantrag die Erfordernisse des Artikels 12 (2) VOBK 2007 erfüllt, , und der Hauptantrag in der Folge gemäß Artikel 12 (4) VOBK 2007 zu berücksichtigen ist.”
• “In der Tat enthält die Beschwerdebegründung keinerlei Argumente, warum die angefochtene Entscheidung zum Hauptantrag aufzuheben wäre. ”
• “Der Vortrag zum Hauptantrag erfüllt daher nicht die Erfordernisse nach Artikel 12 (2) VOBK 2007, und der Hauptantrag wird in der Folge gemäß Artikel 12 (4) VOBK 2007 nicht berücksichtigt.”

   EPO T 2158/15 -  link

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

Die Beschwerde wurde frist- und formgerecht eingereicht und jedenfalls zum Teil ausreichend substantiiert. Die Beschwerde ist folglich zulässig.

2. Hauptantrag - Artikel 12 (2) und (4) VOBK 2007

Die Beschwerde wurde vor dem Inkrafttreten der VOBK 2020 eingereicht. Ausweislich Artikel 25 (2) VOBK 2020 ist daher Artikel 12 (4) VOBK 2007 anzuwenden. Dieser impliziert auch die Anwendung des Artikels 12 (2) VOBK 2007, da Artikel 12 (4) VOBK 2007 bezüglich des zu berücksichtigendes Vorbringens auf diesen verweist.

T 1987/16 - Need to actively maintain objections in appeal

Key points

• The Board finds that claim 1 has basis in the application as filed, contrary to the Opposition Division. The opponent, respondent in appeal, had submitted inventive step objections in the Notice of opposition.
• "The respondent did not reply to the appeal. Therefore no further objections to the claims of the main request need to be considered (Articles 12(3) and 25(2) RPBA 2020 and Article 12(4) RPBA 2007). In addition, the board saw no reason to examine any of the further grounds for opposition of its own motion."
  
• Note, the representative of the opponent has signed a receipt acknowledgement for the summons.

EPO T 1987/16 -  link



10. In conclusion, and in contrast to the opposition division, the board finds that the application as filed provides a basis for a method as referred to in claim 1 with regard to all of the promoters referred to in dependent claim 2. As no further added subject matter objections were put forward, the subject-matter of claims 1 and 2 must be held not to extend beyond the content of the application as filed (Article 100(c) EPC).

Further grounds referred to in the notice of opposition: Article 100(a) in combination with Article 56 EPC and Article 100(b) EPC

11. The respondent did not reply to the appeal. Therefore no further objections to the claims of the main request need to be considered (Articles 12(3) and 25(2) RPBA 2020 and Article 12(4) RPBA 2007). In addition, the board saw no reason to examine any of the further grounds for opposition of its own motion.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.