CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2872/19 – AR not admitted in appeal for lack of substantiation

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This invention relates to tap changers and more particularly to load tap changers in electric transformers.

Brief outline of the case

The opposition was rejected and the opponent appealed this decision.

The board decided that claim 1 as granted lacked IS over D3= D3=EP 0 907 192 and D13=Weidauer, J.: “Elektrische Antriebstechnik”, 1. Auflage, Publics Publishing, 2008 representing common general knowledge.

All AR were either not admitted (AR1-6) or irrespective of the admissibility was lacking IS (AR7).

The patent was thus revoked.

The case is interesting in that it deals with substantiation of AR in appeal and reference to submissions in opposition.

The proprietor’s point of view

For the proprietor,  the non-admission of the ARs for the sole reason that the ARs and the associated arguments were not explicitly reproduced in the reply to the statement of grounds would in the present case be disproportionate.

The content of the response to the appeal together with the referenced documents put the board and the opponent immediately in a position to understand why the features added to the claims of the ARs would overcome the objections.

It was not necessary to peruse all documents filed in the first instance proceedings or search for the concerned passages in the document. This was clearly different from cases where only a general reference to first instance proceedings was made or where no reference to any substantiation is made.

Furthermore, the ARs had not been discussed at all in the appealed decision or in the appellant’s grounds of appeal. Any substantiation of the auxiliary requests therefore would not have addressed any part of the decision under appeal.

Therefore, an explicit discussion of the ARs with the response to the grounds of appeal would not have contributed to the basic task of the appeal proceedings of “reviewing the decision under appeal in a judicial manner”.

Instead, a reference to a document in first instance was made, where the substantiation of the ARs, which did not require any change in view of the decision, was provided.

It would constitute a disproportionate disadvantage for the proprietor if a patent were revoked in appeal without having discussed any of the clearly identifiable ARs only for the formal reason that the ARs and their substantiation had not been filed expressly but by reference to a specific document of the first instance proceedings. Not admitting the ARs merely for this formal reason seemed to violate the right to be heard. The present case was different from the cases underlying the decisions cited by the board in the preliminary opinion.

Following the communication under Art 15(1) of the board, the proprietor filed a further submission trying to further show why the AR should be admitted in the procedure.

The proprietor raised an objection under R 106 because, when not admitting the AR 1-6, the board had not exercised their discretion in the correct manner, thereby one-sidedly disadvantaging the proprietor.

The board’s decision

The board exercised its discretion pursuant to Art 12(4) RPBA07, first sentence, so as not to take into account AR 1-6 because the passage referring to them in the reply to the statement of grounds does not meet the requirements of Art 12(2) RPBA07.

Providing a reference to submissions made in the opposition proceedings rather than expressly specifying all facts, arguments and evidence in a reply to the appeal requires the board at least to check which of the submissions might still apply in view of the decision of the OD and might still be relevant in view of the statement of grounds of appeal.

This already exposes the board to the risk of making the proprietor’s case, which is inappropriate in inter partes proceedings.

In this context it was not the main issue that the board would have had to piece together passages from different submissions. This clearly would have aggravated the problem, but the main issue in the present case was that even specific passages of a single letter did not deal specifically with the issues raised in the statement of grounds of appeal, see also decision T 0503/20, reasons 2.1.

The letter referred to only contained statements identifying the added features, without however substantiating whether these are distinguishing features over D3. Furthermore, the letter referred to only contained general assertions to the effect that none of the prior art documents disclosed the added features, without however, substantiating why the amended subject-matter was not obvious in light of the specific combination of document D3 and D13.

A discussion of the AR in appeal necessarily implies that AR are on file in the appeal proceedings, which was not the case at the time the statement of grounds of appeal was filed. The AR filed during first instance proceedings are not necessarily all maintained in appeal, so it cannot be expected of the opponent to address the AR filed in the first instance proceedings without knowing whether they are maintained in appeal.

The proprietor is expected to present reasons in the reply to the appeal as to why the AR, either maintained requests from the first instance or new requests, overcome the specific objections raised in the statement of grounds of appeal against the MR.

When the patent has to be amended, there is no longer a presumption of validity. The proprietor therefore has to demonstrate that the AR overcome the objections on file at the appeal stage. These do not necessarily correspond to objections presented in the first instance. This is consistent with the view expressed in decision T 1041/21, reasons 5.1.4.

In this context, merely filing a copy of the passages of the letter referred to after notification of the summons did not change the situation. Irrespective of the question whether copying and pasting passages from first-instance submissions fulfils the substantiation requirement in Art 12(2) RPBA07, requests that are not self-explanatory are only deemed to have been filed on the date on which they were substantiated, cf. Case Law of the Boards of Appeal, 10th Edition, V.A.5.12.6)

In that case, the admittance would be governed by Art 13(2) RPBA20. The proprietor argued in this respect that “exceptional circumstances” were present because “no amendment of the substantiation was required in view of the decision in first instance” and the proprietor became aware only through the board’s preliminary opinion that the board considered not to admit the AR “only for formal reasons”. For the board these arguments were not convincing.


The lack of admissibility of AR 1-6 would not have been different in substance under the RPBA20/21. This has been confirmed by the board with reference to Art 12(3) RPBA20.

The key message for proprietor’s is that all requests filed in appeal should, when filing an appeal or replying to an appeal, be properly substantiated with respect to the decision of the OD.

Arguments filed in support of AR filed during opposition should necessarily be complemented with reference to the decision of the first instance. AR filed in opposition lose their presumption of validity when re-filed in appeal.

Any submission filed after the communication under Art 15(1) RPBA20 is submitted to the very restricted discretion of the boards under Art 13(2) RPBA20 and can only exceptionally help. What matters is what has been filed when entering appeal or replying to an appeal.

Divergent case law

By stating that it cannot be expected of the opponent to address the AR filed in the first instance proceedings, without knowing whether they are maintained or not in appeal, the present decision is in clear contradiction with T 664/20, commented in this blog. In T 664/20, the board requested that, when entering appeal, the opponent should take position on all AR filed in opposition, even if those were not discussed during opposition.

It is high time that boards start playing the same tune in procedural matters.

On the procedure

The CPA in the present opposition was a document mentioned in the ISR. It seems that it was not correctly exploited by the ED. The search was missing a reference to common general knowledge, which regularly happens. Claim 1 should never have been granted.

Once more, the decision of the OD was set aside by a board and a rejection of an opposition ended in revocation of the patent.

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