CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 238/19 – Necessity of substantiation of AR in appeal even if they were not dealt with by the OD as a higher ranking request was deemed allowable

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The opponent appealed the decision to maintain the patent according to a MR filed during the opposition procedure.

Contrary to the OD, the board decided that claim 1 of the MR (as maintained) lacked IS.

Admissibility of AR 6

The filing of AR 6 with the reply to the grounds of appeal, i.e. at the beginning of the appeal proceedings can be regarded as an appropriate reaction to the development of the case. In this respect, the board could not see any abuse of procedure. It is also not apparent that the proceedings were deliberately delayed as a result.

AR 6 was thus admitted in the procedure under Art 12(4) RPBA 07

AR 6 was however lacking IS for the same reasons than for the MR.

Admissibility of AR 1-5 and request for remittal

In its reply to the grounds of appeal, the proprietor requested that the case be remitted to the OD “if the Board of Appeal does not intend to maintain the patent according the MR or AR 6 …. in order to have a further decision-making instance when deciding on the AR which have not yet been discussed in detail”.

The Board was of the opinion that, besides a substantial procedural error, an unforeseeable change in the factual situation at a later stage of the proceedings may also be considered special reasons within the meaning of Art 11 RPBA20.

However, the Board could not identify any such circumstances in the present case.

The proprietor’s conditional request for remittal so that claims which are not further substantiated can be discussed in two instances normally requires that at least one further set of claims

  • (i) is either already subject of the appeal proceedings,
  • (ii) or is admitted to the appeal proceedings.

None of the present AR 1 to 5 was subject of the decision of the OD.

A total of 4 AR were filed in the opposition proceedings. The OD neither discussed nor decided on these AR, because the patent was maintained in the version of the MR.

Thus, none of the AR 1 to 4 filed in the opposition proceedings automatically form the basis of the appeal proceedings within the meaning of Art 12(1, a) RPBA20.

Furthermore, according to Art 12(1), b and c) RPBA20, the appeal and the statement of grounds of appeal, as well as all written replies to be filed within four months after notification of the statement of grounds of appeal, constitute the basis of the appeal proceedings.

In the present case, the proprietor’s reply to the grounds of appeal did not contain any AR other than AR 6, so that it was left open which AR should have been considered for remittal to the opposition division: all four AR filed in the opposition proceedings, or only some of them, or completely new AR?

The proprietor’s argument that there would have been no reason to pursue these AR 1 to 4 of the opposition proceedings after the OD’s decision may be a justification for the question why the proprietor had not filed an appeal.

However, there would have been cause for the proprietor to respond to the opponents’ objections raised in the statement of grounds of appeal against each of AR 1 to 4.

Instead, the proprietor did not comment on the substance of these objections in its reply and otherwise only filed amended claims according to AR 6. It merely requested that the matter be remitted to the OD for further prosecution.

The Board finds that if the proprietor had intended to further defend AR 1 to 4, it would have been its duty to formally file them with his reply and to properly substantiate why they overcome the objections raised by the opponent. The requirement of substantiation of the claims under Art 12(3) RPBA20 cannot be replaced by a request for remittal.

It follows that the AR 1 to 4 were also not subject to the appeal proceedings pursuant to Article 12 (1, b and c) RPBA20. This applies all the more to AR 5 filed for the first time in the appeal proceedings.

According to established case law of the Board of Appeal, amendments to claims which have not been substantiated at the time of filing and which are not understandable per se are deemed not to have been validly filed.

They become effective only on the date on which they are substantiated and are deemed to have been filed on that date (see also T 319/18 of 20 January 2021, point 2.1 of the grounds, T 1732/10 of 19 December 2013, point 1.5 of the grounds).

In view of Art 13(2) RPBA20 AR 1 to 5 were not admitted into the appeal proceedings.

Objection under R 106

The proprietor took the view that by the non-admission of AR 1 to 5 he had not been given the opportunity, neither in the opposition proceedings nor in the appeal proceedings, to defend these requests and thus its right to be heard had been violated and filed an objection under R 106.

The objection under R 106 was dismissed.

For the board, the proprietor was heard on the question of the admissibility of its AR and was able to present its arguments in this respect without restriction. These arguments were taken into account by the Board in its decision.

The Board was therefore of the opinion that the proprietor’s right to be heard was not restricted or disregarded with regard to the question of the admissibility of its amended submission.

The proprietor’s objection is actually directed against the Board’s discretionary decision not to admit into the proceedings the auxiliary requests and lines of argument submitted late.

The proprietor argued in particular that the Rules of Procedure, insofar as they provide for the non-admission of amended submissions in appeal proceedings, are contrary to a party’s right to be heard.

In this context, the board noted that the right to be heard under Art 113(1) does not include the right to file requests at any point in the appeal proceedings.

The right to be heard is not limited by Art 13(2) RPBA20. This provision only regulates the strict requirements for taking into account subsequent amendments if the party concerned has failed to take advantage of the opportunity given to it to make its views known at an earlier stage.


Not substantiating requests in due time is looking for problems

As the patent was maintained according to the MR, there was no necessity for the OD to discuss AR 1 to 4.

It has however to be noted that the substantiation of AR1-4 during opposition was rather scarce and bordering on the absence of a proper substantiation. Mainly the differences with the MR or the preceding request were explained.

In its grounds of appeal the opponent challenged the patentability of AR 1-4 filed during opposition.

The BA made clear that from that moment on, the proprietor should have substantiated all the requests, and especially the AR, filed in reply to the grounds of opposition. The proprietor satisfied himself with defending the MR as he had done before the OD.

The requirement of substantiation of the claims under Art 12(3) RPBA20 cannot be replaced by a request for remittal.

T 1732/10 is a very important decision in relation to substantiation of requests and cannot be ignored.

In the catchword of T 1732/10 one can inter alia read the following:

“Not reacting in substance to the appeal of the opponent, but waiting for the Board’s preliminary opinion before any substantive reaction is filed, is regarded as an abuse of procedure………

Such requests, which are not self-explanatory – are considered by the Board as submitted only on the date of their substantiation……” Those requests were not admitted under Art 13(1) and 13(3) RPBA07.

T 319/18 came to the same conclusion as T 1732/10 but under the RPBA20.  

No right for two instances

Even if AR 1-5 would have been admissible, there is no right for a party to have a decision taken by two instances. By virtue of Art 111 and Art 11 RPBA20 the board could have decided through.

See for instance T 815/17 in appeal upon examination or T 492/10 in appeal upon opposition.

Discretion given to the BA by the RPBA20

Even if the great discretion given to the BA without any control can be criticised, the lack of any substantiation of the AR filed in reply to the statement of grounds of appeal cannot remain without consequences.

It is most probable that even if a future petition for review would not be deemed clearly inadmissible, it would clearly not be allowable as the petitioner would have been heard on the reasons of non-admissibility. Numerous R decisions are along this line of reasoning.

In this respect petitions for review are no remedy when the discretion of the BA goes in various, sometimes contradictory, directions.

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