The three following cases in appeal after opposition have one thing in common: one of the parties referred to submissions made in opposition.
The BA do not like this way of doing.
The opponent appealed the decision of maintenance according to the MR filed during OP before the OD.
In its statement of grounds of appeal, the opponent/appellant submitted under insufficiency of disclosure merely the following: “[W]e maintain our arguments from the opposition proceedings on this ground“.
The opponent submitted that insufficiency of disclosure formed a ground of opposition in the appeal proceedings, because in the present case due to the transitional provisions of Article 25(1) RPBA20, Articles 12(4)-(6) and 13(2) RPBA20 did not apply, while Article 12(1) RPBA20 applied.
The opponent further submitted that, since Article 12(1) RPBA20 required that the appeal proceedings be based on the decision under appeal and minutes of any oral proceedings before the department that issued this decision, the opponent’s arguments on insufficiency presented in parts 6.1 and 6.2 of the decision under appeal, and points 29 to 31 of the minutes formed part of the appeal proceedings.
Without any surprise, the BA was not convinced by these arguments. While the provisions of the RPBA20 referred to by the opponent apply to the case, the assessment of whether or not insufficiency forms part of the proceedings as a ground of opposition is not limited thereto.
Further provisions of the RPBA have to be taken into account, including, that of Articles 12(2) and (3) RPBA20 and Article 12(4) RPBA07.
The BA reminded that Article 12(2) and (3) RPBA20 set out that in view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a party’s appeal case has to be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.
In the present case, these requirements are not fulfilled by a passing reference in the statement of grounds of appeal to the appellant’s arguments put forward in the opposition proceedings.
The board also noted that, according to the case law, a mere reference to submissions made at first instance, as a rule, cannot replace an explicit account of the legal and factual reasons for the appeal.
The ground of opposition under Art 100(b) and 83 did thus not form part of the appeal proceedings.
The case was remitted to the OD with the order to maintain the patent on the basis of claims 1 to 17 of the MR received during the OP, and a description to be adapted thereto.
All 3 opponents appealed the decision to reject the oppositions.
In the statement of grounds of appeal, opponent 3 (Mr Strawman) made a sweeping reference to its submissions during the opposition proceedings (filed as annexes A and B) and additionally stated that any one of documents C1-C4 could alternatively be regarded as the CPA for assessing inventive step
In its communication pursuant to Art 15(1) RPBA20, the board informed the parties of its provisional opinion that this did not constitute a substantiated submission in the current appeal proceedings, and that C2 was in any case not prior art under Art 54(2).
The board reminded that a mere reference to a party’s earlier submissions without actually dealing with, or entering into a discussion of, the reasons given in the decision under appeal by the opposition division for arriving at its decision is not enough to substantiate a ground of appeal and referred to T 1311/13, Reasons 19.
During the OP before the board, opponent 3 stated that they maintained these objections raised in the statement of grounds of appeal with regard to AR 2. However, they did not provide any argument why the board’s provisional opinion had been incorrect but explicitly acknowledged it.
The board therefore had no reason to deviate from its provisional opinion. The above-mentioned ground of appeal was therefore not taken into account under Article 12(2) and (4) RPBA07 in conjunction with Art 25(2) RPBA20.
Opponent 2’s objection of lack of IS step in view of the combination of C5 and C7 was only raised in reply to the board’s preliminary opinion, after summons to oral proceedings had been notified. It was thus not admitted under Art 13(2) RPBA20.
The case was remitted to the OD with the order to maintain the patent on the basis of claims 1 to 14 of AR 2 filed with the reply to the appeals and a description to be adapted thereto.
The proprietor appealed the revocation of its patent.
The statement of grounds of appeal did not contain any submissions on the MR and the AR1-3. Even the arguments on AR 4 in the proprietor’s statement of grounds of appeal are still presented as optional by the adjective “in particular”.
The board reminded that a reference to submissions at first instance does not fulfil the requirements of Rule 99(2) and Art 12(2) RPBA07. See Case Law of the Boards of Appeal, 9th edition 2019, V.A.2.6.4(a)).
The board added that the arguments of the proprietor stated in the contested decision are not suitable to replace a substantiated submission in the statement of grounds of appeal.
The Board came to the conclusion that the MR as well as the AR 1 to 3 were not sufficiently substantiated within the meaning of Art 12 (2) RPBA07. Therefore, the Board exercised its discretion under Art 12(4) RPBA07 to disregard the MR and AR 1 to 3.
For the board, the question of whether AR 4 has been sufficiently substantiated can be left open in view of the board’s conclusion that claim 1 of AR 4 does not fulfil the requirement of Art 83 and that this request is therefore not allowable.
As far as AR5 was considered, there was no substantiation and no reasons were given why this AR could not have been filed in first instance. It was thus also not admitted under Art 12(4) RPBA07.
The revocation was thus confirmed.
A mere reference to submissions in opposition is useless, even under the RPBA07.
Any submission has to deal with the decision taken in first instance, especially in opposition.
In order for the grounds of opposition to be taken into account in appeal, the statement of grounds of appeal of the opponent must deal with the decision issued by the OD.
It is not for the board to identify issues which arose in opposition proceedings and
– may (or may not) still be a matter of dispute in appeal proceedings,
– but for the appellant to put forward in the statement of grounds of appeal its line(s) of argument(s) and each of the facts and evidence on which it relies in appeal proceedings.
It also applies to all objections of lack of patentability, as well as to requests filed by the proprietor.
Even a reference to the arguments of the proprietor stated in the contested decision are not suitable to replace a substantiated submission in the statement of grounds of appeal.
In the explanatory comments on Art 12(5) RPBA20 it is specified that if a party merely refers to its submissions before the department of first instance, the Board may decide not to take these requests, facts, etc. into account. After having been established practice under the RPBA07, is has become an established practice under the RPBA20.
The above considerations apply mutatis mutandis to submissions of the respondent. There is never the guarantee that a board will confirm the decision of the OD.
Even if arguments can be re-used to a certain extent, reasons as to why the decision of the OD was incorrect or should be confirmed/infirmed on a given topic, have to be submitted so that the board can decide without any further investigations.
What was not admissible under the RPBA07 is certainly not admissible under the RPBA20.
All this appears straightforward and is anything but a scoop.
It seems however that such basic considerations are still ignored by some parties to appeal.