CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1220/21 – Admissibility and substantiation in appeal of requests by the proprietor

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Brief outline of the case

The outline of the case is similar to that explained in the preceding blog.

In this blog we will discuss the non-admissibility of AR 2 and 3.

The admission of an objection based on D3 as CPA has been discussed in the preceding blog.

The parties’ point of view on the admissibility of AR1-3

The opponent requested that AR 1 to 3 not be admitted under Art 12(3) and (5) RPBA.

The proprietor argued that AR 1 to 3 should be admitted into the appeal proceedings.

The question of the admissibility of AR 1did not have to be decided, as the board decided that it was not allowable. See the preceding blog.

The proprietor’s point of view on the admissibility of the argumentation raised during OP

The proprietor argued that it did not expect that further substantiation would be required for the AR before the opponent itself provided substantiated objections with respect to these requests.

Further, it held the opponent’s statements vague and generic and not related to the newly added features, so they did not merit a substantive response.

Furthermore, the opponent’s objections in the grounds of appeal under Art 123(2) against AR 2 and 3 were not part of the first instance decision. As a consequence, they were late filed and should not be admitted at the appeal stage.

Even if they were admitted, the proprietor had not expected that a response would have been required. This seemed reasonable, since the new RPBA had only entered into force at the beginning of 2020, and the parties were not used to the new provisions.

The board’s decision on AR 2 and 3

As AR 2 and 3 were filed in opposition, their renewed filing in appeal was not an amendment under Art 12(4) RPBA. However, the bord did not admit those requests as they were not properly substantiated.

Distinguishing between filing of a request and its substantiation

The present board disagreed with T 1732/10, reasons 1.5; T 1426/17, reasons 2.1; Case Law of the Boards of Appeal, 10th edition, V.A.5.12.6). Those boards concluded that unsubstantiated requests which were not self-explanatory were deemed to have been filed only at the point of time when substantiation was provided.

For the present board, a distinction should be made between the filing of a request and its substantiation. This follows from Art 12(3) and (5) RPBA, according to which a request, even if not substantiated, should be assessed by the board with respect to its admittance and may eventually be admitted.

Such an assessment of the request and the possibility of admitting it presupposes that the request has been validly filed despite deficiencies in its substantiation.

In other words, while the lack of substantiation leaves the admittance of the claim request to the discretion of the board, there is no basis in Art 12(3) and (5) RPBA  for concluding that a request is not validly filed solely because it is not substantiated.

Substantiation under Art 12(3)/12(5) RPBA

Secondly, the board held that the admittance of an amended request which is not expressly substantiated pursuant to Art 12(3) RPBA  is at the discretion of the board under Art 12(5) RPBA, even if the amendments are self-explanatory.

For the board, an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on. The board referred to T 2598/12, reasons 1.10. Therefore, the admittance of such request would still be at the discretion of the board, cf. T 568/14, reasons 8.4 and 8.5, where the request was explicitly admitted although it was considered to be self-explanatory. However, if a request is considered to be self-explanatory, this aspect will normally be taken into account when exercising the discretion.

The required degree of substantiation under Art 12(3) RPBA can be defined as follows:

I. A proprietor who files an amended claim request is normally required to at least:

indicate the basis in the application as filed for each amendment, even if no objection under Art 123(2) has been previously raised

indicate which objections are intended to be overcome, i.e. the purpose of the amendments, and

provide reasons why an amendment overcomes the objections raised.

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 Art 12(3) RPBA

These requirements essentially correspond to those set out in Art 12(4) RPBA, which applies to those requests regarded as an amendment under Art 12(4) RPBA.

There is no reason to apply a different standard if – as in the present case – the submitted request is not an amendment under Art 12(4) RPBA.

Therefore, the fact that a request is not an amendment under Arti 12(4) RPBA does not exempt or reduce the proprietor’s duty to substantiate such a request. Rather, it is the duty of the party filing an amended request to present the arguments on which it relied clearly and concisely, which includes also the required information as set out in Art 12(4) RPBA.

II. If a claim request is intended to overcome N or IS 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 request is filed to overcome an objection under Art 56, 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).

III. Last but not least, 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.

Discretion in matters of admissibility under Art 12(5) RPBA

The discretion not to admit a request under Art 12(5) RPBA may be exercised by taking into account the extent to which a lack of or an insufficient substantiation under Art 12(3) RPBA prevents the board and/or the other party(ies) from recognising the proprietor’s intentions. Whether the amendments are self-explanatory appears irrelevant.

On the admissibility of the further argumentation raised during OP – Art 13(2) RPBA

The proprietor’s duty to substantiate its requests is an initial obligation which does not depend on whether or not the opponent had previously put forward an objection under Art 123(2).

The proprietor’s expectations in view of the new RPBA do not qualify as an exceptional circumstance, in particular considering that the wording of Art 12(3) RPBA  corresponds largely to that of Art 12(2) RPBA07 and accordingly, it was and still is common practice of the boards to assess whether the proprietor filing an amended set of claims has provided the required substantiation. The board also referred to Case Law of the Boards of appeal, 10th edition: V.A.4.3.5 and V.A.5.12.6.

The board concluded that the proprietor had not explained with cogent reasons why exceptional circumstances would apply which could justify admitting the new submissions aiming at substantiating the AR after the notification of the summons under Art 13(2) RPBA. Thus, the board exercised its discretion under Art 12(3 and 5) RPBA not to take into account these submissions.


The present decision

  • Departs from existing case law according to which unsubstantiated requests which were not self-explanatory are deemed to have been filed only at the point of time when substantiation was provided. A distinction has to be made between filing and admissibility of a request.
  • The same standard of substantiation applies whether or not a request is considered as an amendment in the meaning of Art 12(4) RPBA or not.
  • The degree of substantiation depends on the objections to be overcome, but the source of amendments and the absence of added subject-matter is always to be substantiated

If requests are not substantiated when filed, any attempt to substantiate those during OP is doomed to fail. The third level of convergence, Art 13(2) RPBA is a nearly insurmountable bar for submissions during OP. Only in exceptional circumstances justified by cogent reasons such submissions can be admitted. 

The present decision is a good summary of all conditions rendering a request admissible and not only when, but also what has to be done in in matters of substantiation.

That an improperly substantiated request risks not to be admitted is however nothing new in procedures before the EPO. The necessity of substantiating requests also applies for request filed before a first instance division, even if those are filed within the time limit set under R 116(1).

In the present case, AR 1-3 were indeed never substantiated when filed in opposition, and also not when entering appeal.

For a proprietor, it is therefore advisable to always substantiate AR filed in first instance. At least the board cannot then claim that those requests were never substantiated.

Whether a new substantiation is required when entering appeal, should the AR having played no role in opposition, is still open. I would think that in such a circumstance, the proprietor could wait to have seen the objections raised by the opponent when entering appeal, before he makes any amendments to the substantiation of the AR filed in opposition.

On the procedure

See the comments on the preceding blog.


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