EP 3 010 370 B1 relates to a method for determining movement patterns during a dental treatment.
Brief outline of the case
The opponent appealed the OD’s decision to maintain the patent according to a new MR filed during opposition.
The board revoked the patent as the new MR filed in appeal was not taken into account under Art 13(2) RPBA
The proprietor questioned the admissibility of the opponent’s appeal.
The proprietor’s point of view
The statement of grounds of appeal did not fulfil the requirements of Art 12 (3) RPBA, as it did not state, as required, the reasons for appeal clearly and concisely.
The submission in the grounds of appeal is based to a significant extent on a repetition of the submissions from the opposition proceedings and does not deal with the reasons for the decision.
The requirements of Art 12 (3) RPBA do not allow the introduction of arbitrary further points from the submissions in the opposition proceedings.
Insofar as the opponent’s submission referred to certain passages of the decision at all, it either attempted to cast the OD’s reasoning in a false light or the submission was based on repetitions of content or merely contained misleading or unfounded statements of opinion by the opponent.
The opponent was pursuing a tactic of obfuscation; its submission merely meant that the passages possibly dealing with the contested decision had to be retrieved first.
The opponent’s point of view
In drafting the grounds of appeal, there had been no choice but to follow a logical structure which, while showing a significant overlap with the arguments in the opposition proceedings. This cannot be criticised.
The grounds of appeal contained a summary of the arguments from the opposition proceedings, followed by a summary of the reasons why the OD had not followed the former, and then specifically setting out why the OD’s reasoning was to be set aside
The arguments in the statement of grounds of appeal were therefore in conformity with the requirements of Art12(3) RPBA.
The board’s decision on the admissibility of the appeal
The statement of grounds of appeal is objectively recognisable and refers to the requests, facts, objections, arguments and evidence that are the subject of the contested decision and also states the reasons why the contested decision should be overturned.
Whether the arguments of the opponent in the examples given by the board for its decision are well-founded and convincing in their substance is irrelevant for the question whether the statement of grounds of appeal fulfils the requirements of Art 12(3) RPBA, or is admissible within the meaning of R 101(1) in conjunction with R 99(2).
The Board disagreed with the central point of the proprietor’s criticism, according to which the arguments in the statement of grounds of appeal were not clear and concise, and therefore did not correspond to the requirement of Art 12(3) RPBA.
The RPBA do not contain no definition of what is meant by the terms clear and concise. It is also not defined anywhere that submissions that are not clear and concise should not be taken into account.
Rather, it is at the discretion of the board to decide in each individual case whether a possibly very long and/or unclear submission means that the submission should not be admitted in whole or in part under Art 12 (5) RPBA.
In the present case, the board did not see that the length of the statement of grounds of appeal, i.e. 25 pages, the chosen structure or the extent of the arguments repeated from the opposition proceedings would violate the requirement of clarity and conciseness under Art 12(3) RPBA, or be considered a ‘concealment tactic’ or an ‘abuse of procedure’.
The structure of the grounds of appeal chosen in the present case, which essentially consists of a summary of the arguments from the opposition proceedings for each of the objections rejected in the contested decision, a summary of the reasons for the decision, followed by an explanation of why these are said to be incorrect, is not in itself objectionable.
It clearly serves the purpose enshrined in Art 12(3) RPBA of setting out in the statement of grounds of appeal the grounds on which it is requested that the decision be overturned and stating the relevant objections and facts.
The board gave some examples as to why the structure of the grounds of appeal used by the opponent can be clearly recognised by the corresponding wording.
The fact that, for example, verbatim repetitions from the notice of opposition were also included between paragraphs 4.6 and 4.16 and following 4.16 is not considered by the board to be an abuse of procedure or to lead to obfuscation. The opponent’s submission therefore does not have to be retrieved first, as claimed by the respondent, but follows a comprehensible structure.
The board agreed with the proprietor that it was faced with a complex situation as a result of the grounds of appeal. However, the complexity is not created by a statement of grounds of appeal that is contrary to the purpose and conditions of Art 12 (2) and (3) RPBA.
Rather, the complexity results from the nature and number of objections raised, on which the proprietor had to comment. Nevertheless, it is entirely legitimate for the opponent to raise all possible objections that could lead to this result in the context of its request for revocation of the patent and within the limits of the RPBA.
For the sake of completeness, it should also be noted that the case law cited by the proprietor regarding the repetition of passages from the notice of opposition and/or from other letters in the first instance proceedings, or regarding veiled submissions has no relevance to the present case.
As explained in detail in the decision, the arguments in the statement of grounds of appeal are not based on a mere repetition of submissions from the opposition proceedings, nor do the objections have to be retrieved from unrelated parts of the submissions.
Comments
The proprietor has manifestly not grasped the difference between the admissibility of the appeal with the question of being well founded and convincing.
If in the present case, proprietor claims that a statement of grounds of appeal of 25 pages is neither clear nor concise, he should be aware that much lengthier grounds of appea can be filed, whilst still being clear and concise.
As long as the board can made head or tail of what is stated in the grounds of appeal, and it corresponds to the requirements of the RPBA, this should also be the case of the proprietor.
It is however true that a pungent argumentation does not need to be drawn out on a large number of pages.
In view of the RPBA, with their three levels of convergence, it is an absolute necessity not only to be complete in its argumentation and evidence/requests in first instance proceedings, but also when entering appeal.
As long as the submissions in opposition are brought in relation with the OD’s decision, they are perfectly acceptable. What is not acceptable is a mere global reference to the statement of opposition disregarding the OD’s decision.
In view of the outcome, it was understandable that, in the present case, the proprietor would have been much happier, should the appeal have been deemed not admissible.
Comments
2 replies on “T 343/23 – How to interpret “clearly and concisely” in Art 12(3) RPBA”
call for desperate measures. When you are criticizing the appeal for being too long in an attempt to have it not admitted, your case looks extremely weak.
@ Desperate times,
In other words: let’s scrape the bottom of the barrel in the hope it helps.
The opponent raised objections under Art 123(2) against the MR according to which the patent had been maintained. If the objection is well founded, there is little to be done.
Although provisional, the communication under Art 15(1) RPBA was very clear: the opponent’s appeal appears well founded. The proprietor was also informed that its objections against the admissibility of the appeal were anything but convincing.
The whole development in the case can be summarised as follows: chronicle of a predicted disaster.