CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2125/21 – Don’t leave the board guessing what are your grounds of appeal

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The patent relates to encoded chemical libraries, particularly nucleic acid-encoded self-assembling chemical libraries.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board confirmed the rejection of the opposition.

The case is interesting in view of the reasons why the submissions from the opponent were to an extent not taken into consideration.

The opponent’s point of view

In respect of novelty the opponent’s submission was limited to the statement: “The Opponent refers to the arguments in respect of lack of novelty filed with the Statement of Opposition dated February 23, 2019”. The document was annexed to the statement of grounds of appeal.

As regards sufficiency of disclosure, the opponent limited himself to a single argument dealt with in the decision under appeal in the context of inventive step. According to the opponent, since claim 1 did not recite a specific step, the ground of opposition under Art 100(b) prejudiced maintaining the patent as granted.  

During OP, the opponent argued, firstly, that it was implicit in the submissions in the statement of grounds of appeal that it disagreed with the formulation of the technical problem in the decision under appeal and why it disagreed, and presented, secondly, reasons for not agreeing to the “improvement”-problem as adhered to by the OD and reasons in support of the “alternative”-problem.

The board’s decision

General statement

The opponent made several statements in its grounds of appeal to the effect that they formally introduced and/or maintained and/or referred to all arguments, facts and evidence put forward in the opposition proceedings. In fact, the opponent seemed to regard all this as being part of their appeal proceedings. For the bord, this understanding is not correct.

These statements leave it entirely to the board and the proprietor to conjecture in what respect the opponent might consider the decision under appeal to be defective.

It is, however, not for the board to identify the issues that may still be a matter of dispute among those raised in each and every submission in the previous proceedings, nor to identify the arguments as to why the impugned decision is incorrect, but for the parties, here the opponent, to bring forward in the statement of grounds and in the reply their line(s) of argument and all the facts and evidence on which they rely in appeal proceedings.

Thus, when giving reasons for the decision, the board confined itself to arguments, facts and evidence on which the appellant relied in the appeal proceedings.

Patent as granted – Sufficiency

In the decision under appeal, the OD dismissed the argument under sufficiency of disclosure.

The board has not seen arguments from the side of the opponent that the fact on which the decision under appeal is based is wrong.

Patent as granted – Novelty

In appeal, the opponent has neither alleged that the claimed subject-matter lacks N nor submitted arguments that the decision under appeal in respect of N is wrong, but merely referred to arguments in this respect “filed with the Statement of Opposition”.

Patent as granted – Inventive step

In point 36 of the decision under appeal, the OD agreed with the proprietor on the formulation of the OTP, when starting from the CPA represented by D8. The OTP could be formulated as the provision of an improved method for the preparation of an ESACHEL type library (“improvement”-problem).

At the same time the OD dismissed the opponent’s argument that “the difference(s) do(es) not result in an effect, because the end-library is the same” and the “claimed method would therefore provide an alternative” (the “alternative”-problem). The OD concluded that, in respect of the “improvement” technical problem, the subject-matter of independent claim 1 was inventive.

in appeal the opponent adhered to the same OTP as formulated in the opposition proceedings, i.e. the “alternative”-problem, but without providing reasons in the grounds of appeal as to why the OTP defined by the OD, the “improvement”-problem, was wrong, or why the OD was wrong to dismiss the technical problem as proposed by the opponent on opposition.

The whole body of arguments submitted by the opponent in the context of inventive step in the statement of grounds of appeal was limited to obviousness of the subject-matter of the independent claims in respect of the less ambitious “alternative”-problem mainly based on the disclosure of document D9. D9 was not the CPA for the OD, but D8.

For the board, independently of whether or not the opponent’s argument holds true or not in substance, such implicit disclosure in the statement of grounds of appeal cannot meet the “clearly and concisely”-requirement of Art 12(3) RPBA.

As far as explicit reasons against the adoption of the “improvement”-problem and in favour of the “alternative”-problem have been given, these reasons where submitted for the first time during the OP, and thus constituted an amendment to the opponent’s appeal case within the meaning of Art 13(2) RPBA. Those reasons were thus not taken into account unless there are exceptional circumstances.


There’s no question of blaming the opponent or its representative, but it’s hard to do better than that if you don’t want to be successful in appeal.

The arguments brought forward in opposition can be re-used, but they have to be put in relation with the grounds of the decision of the OD. Merely sticking to the arguments brought forward in opposition.

Leaving the board and the proprietor to conjecture in what respect the opponent might consider the decision under appeal to be defective, is the best way to fail in appeal.

Art 12(3) RPBA requires the statement of grounds of appeal to set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld. Nothing like this was to found in the statement of grounds of appeal of the opponent.

Art 13(2) RPBA is a clear deterrent to late submission of arguments. The case law relating to the application of this article by the boards leaves very little doubts.

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