EP 2 736 576 B1 relates to a needle tip protector assembly for safety IV catheter assembly.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The appeal was dismissed mainly for lack of substantiation.
An objection under R 106 by the opponent was as well dismissed.
The important discussion here is about re-submission in appeal of first-instance submissions and their admissibility
The opponent’s point of view on the admissibility of its grounds of appeal
All of the objections raised in the statement of grounds of appeal should be admitted into the appeal proceedings. These objections were raised and maintained in the opposition proceedings.
It had been necessary to re-submit the first-instance submissions in order to maintain them in appeal.
At the time of submitting the grounds of appeal, it was not possible to determine which points were particularly relevant to the appeal proceedings.
Moreover, under Art 12(4) RPBA, only submissions made for the first time in the appeal proceedings represent an amendment which could be admitted only at the discretion of the board.
The grounds of appeal explicitly distinguish between new submissions, which dealt in particular with the reasoning in the decision under appeal, and the repetition of submissions made in the first-instance proceedings, which had not been duly considered by the OD.
By substantiating each of the grounds of opposition that prevented the maintenance of the patent as granted, the statement of grounds of appeal provided reasons why the patent was to be revoked and consequently why the decision was to be set aside.
It was only because of the conciseness required by Art 12(3) RPBA that the grounds of appeal omitted a sentence indicating that the corresponding assessment in the decision under appeal was incorrect.
The submissions in the statement of grounds of appeal were complete, and included an interpretation of the features of claim 1 as required by Art 69 as well as objections according to this claim interpretation.
It was not comprehensible why a review of the decision under appeal by the board should represent an undue burden. If, however, such a review were to be considered an undue burden, then this was caused by the insufficient reasoning in the decision under appeal, as the OD did not interpret the features of the claim before examining the grounds for opposition, contrary to the requirements of Art 69.
The proprietor’s point of view on the admissibility of its grounds of appeal
None of the objections raised in the statement of grounds of appeal should be admitted into the appeal proceedings because they did not comply with Art 12(3) RPBA.
The decision under appeal included detailed reasoning.
The opponent had merely repeated its first-instance submissions by copying them verbatim into its statement of grounds of appeal.
If the opponent was of the opinion that there were flaws in the decision under appeal, this should have been pointed out in its statement of grounds of appeal, and yet the statement of grounds of appeal did not discuss any flaws in the decision under appeal.
The only part that did refer to the decision under appeal, on pages 21 and 22, did not include a detailed discussion of the alleged deficiencies, and referred to only one aspect which, according to the OD, had not been decisive for the outcome.
The boards decision
The statement setting out the grounds of appeal consists of sections I to VIII. Except for section I (Requests), section VIII (Summary) and the passage from the last paragraph of page 20 to the end of page 22, the grounds of appeal are limited to a – mostly verbatim – repetition of written submissions made in the first-instance proceedings.
In particular, section III of the grounds of appeal, which deals with claim interpretation, is identical to section III of the notice of opposition. With the exception of the passage on pages 20 to 22 referred to above, sections V to VII of the grounds of appeal, which contain all the objections, are also limited to repetitions of written submissions made in the first-instance proceedings.
Hence, with the exception of the passage on pages 20 to 22, the objections raised in the statement of grounds of appeal had already been presented, in the very same manner, in the first-instance proceedings, i.e. before the decision under appeal had been issued.
The passage on pages 20 to 22 provides arguments in relation to a specific objection and explicitly addressed the reasoning set out in the corresponding section of the OD’s decision. This passage is however not relevant for any of the other objections raised in the statement of grounds of appeal.
Whether or not the requirements of Art 12(3) RPBA are met depends on the specific circumstances of each case.
In the case of an appeal of an opponent against a decision of the OD in which an objection was found unconvincing, a mere repetition of the first-instance submissions is normally not sufficient.
Rather, an opponent must normally provide arguments why the opposition division’s reasoning in the decision under appeal is allegedly incorrect, see T 557/21, Reasons 6.2.3. Arguments which have already been put forward in the opposition proceedings may be included, but must usually be set out in the context of the decision under appeal, see T 2117/18, Reasons 2.2.11.
Contrary to what was indicated by the opponent, the board’s power not to admit a submission under Art 12(5) RPBA does not depend on whether that submission qualifies as an “amendment“.
Accordingly, the fact that a claim request or objection is not an amendment under Art 12(4) RPBA does not exempt or reduce a party’s duty to substantiate it.
When exercising the discretion conferred to the board under Art 12(5) RPBA with regard to the substantiation requirement under Art 12(3) RPBA, the extent of substantiation, respectively the lack thereof, is assessed.
This involves assessing the extent to which the appellant’s case for setting aside the decision can be understood, see T 321/21, Reasons 6.6, taking into account the reasoning in the impugned decision.
Comments
The present decision is in absolute contrast with that of T 1958/22, commented recently in the present blog. In T 1958/22, the board was not persuaded that any of the opponent’s arguments or objections should be disregarded solely on the grounds that they were allegedly repeated from the first-instance proceedings. This is however what the present board did.
The proprietor’s excuse relating of the conciseness requirement in Art 12(3) RPBA, was rather week, and did most probably not help its position. The same is valid for the reference on Art 12(4) RPBA, but it must be admitted that the opponent has a point. When the opposition has been rejected, where is there any wriggle-room to present new arguments, as those would clearly be dismissed under said Art 12(4) RPBA.
The reference to Art 69 for the interpretation of the claim by the opponent, was most probably due to decisions along this line by the same chairman and the same legal member. See below. It did not help, but it is not possible to find any reference to Art 69 in the decision under appeal. Anyway, G 1/24 should clarify the situation.
The present decision does however not come as a surprise. It has been taken by Board 3.2.02 with the same chairman and legal member than in case T 1042/18. T 1042/18 threw overboard a long line of case allowing a change from lack of N to lack of IS for the sake of an overly strict, and actually artificial, application of the RPBA. T 1042/18 has also been commented in the present blog. Some boards followed it, some did not.
The same board, with the same chairman and the same legal member has issued T 450/20, commented in the present blog, following T 1473/19, also commented in the present blog. In those two decisions, the board, contrary to the established line of case law, considered that Art 69(1) ought to be applied when deciding upon Art 123(2). One wonders about the influence of the legal member in the present board.
The present decision shows once more that in procedural matters, and to a certain extent in substantive matters, the lottery is still going on at the boards. This is not in the interest of the boards. I refer here to an article published in JUVE in May 2024, which said
“It must not become a lottery for users where each board provides a different service and result. The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA”.
There is nothing much to add.
Comments
6 replies on “T 404/23 – The mere repetition of arguments submitted in opposition is not sufficient in appeal – Blatant contrast with T 1958/22”
Daniel, forgive my ignorance. If the following paragraphs are not worth answering, don’t spend your valuable time answering them.
First, when Art 108 EPC refers to the “grounds of appeal” I take that to mean the basis on which the TBA should decide that the OD got it wrong.
In other words, “grounds of appeal” means the argumentation the Board should adopt, to set aside the OD’s Decision.
I see this as something quite different from “the grounds for the decision about the validity of the claims”. If the statement of grounds bangs on about claim validity, but does not comprehensively and with exhaustive specificity explain WHY the text of the OD written decision is in error, it is not in compliance with Art 108. Simple as that, no?
Second, do we have here another difference between practice at the EPO and practice in national proceedings in Germany? Perhaps, in Germany, the idea is that you simply put another coin in the slot machine called the appeal instance, and pull the lever one more time?
Was not the EPC drafted to adopt all that was good in the pre-existing national systems, and squeeze out all that was not good? Did it succeed? In large measure, yes, I would guess.
Dear Max Drei,
What is at stake here is whether the opponent can use in appeal argumentation which has already been used in opposition. I have noticed that some boards are very formalistic compared to others. The present one is of the first kind.
I am not able to say much about German practice, but from my discussions with colleagues of yours and retired judges, it is much easier in Germany to put another coin in the slot machine, and you can come very late with new submissions. This is for instance different in France.
I can agree with you that the EPC and the EPO were a great success. Just remember that in the wildest fantasies of the Interim Committee after the signature of the EPC, 30-40.000 applications were expected a year in the steady state. We are far from this nowadays.
The EPO should however be careful not to go too far with pushing production to the detriment of quality. The number of patents maimed by an opposition as well as the number of decisions of OD’s set aside by boards is way too high.
The boards should also be careful not decide too quickly on mere formalistic reasons. The primary aim of the RPBA was certainly to help reducing the backlog, but it was certainly not too allow boards not to fulfil their duty. When the RPBA are taken as pretext to ignore decisions of the EBA, this does not abode well.
What grounds of appeal means, depends on the choice of the nature of the appeal: judicial review or second instance? Both work, are use in some contacting states, and have advantages and disadvantages. Both make assumptions about first instancep procedure. The procedure before the OD is historically nothing like a trial in a British court. Also much cheaper, as an not unimportant point.
The EPC allows both approaches in my view. It’s the RPBA 2020 were the choice is made currently.
Dear Max Drei, dear Peter,
The valid RPBA try to define the role of the boards as that of a judicial review of first-instance decisions. This was not always the case. For a long time it was a mere second instance, called BAs. The judicial review is neither to be found in the EPC nor in the Rules. It is a pure creation of the RPBA.
In view of the hierarchy of norms, the RPBA come well after the EPC and its Implementing Regulations.
The problem is that in spite of the reforms of 2016, cf. R 12a-12d, the boards are not as independent as they believe. Their budget is still part of the general budget of the EPO and is under the direct control of the president of the EPO.
Furthermore, the Delegation of functions and powers from the President of the EPO to the President of the BA, may be revoked by the President of the EPO. See Art 4, delegation of functions and powers from the President of the EPO to the President of the Boards of Appeal, OJ EPO 2018, A63.
The valid RPBA have given the boards a large discretion in procedural matters, but this discretion is not carried out in a coherent and convergent manner. The way procedural aspects are dealt with depends too much on the board in which an appeal case ends according to the IPC,
A reform of the status of the BA, giving them a real independence, like what happened with the creation of the German Federal Patent Court, had been proposed by the EPO 20 years ago, but it was too soon after the Diplomatic Conference of 2000, and was thus not wished by the contracting states.
That’s why we have presently a quite strange situation, following the upheaval in the years before introducing R 12a-12d and the exile of the boards to Haar. .
Well, thank you, gents, for your reactions to my post about EPC, Article 108 and what “grounds of appeal” means.
The way I see it, RPBA 2020 merely confirms what Art 108 declared from the 1973 get-go, that in the statement filed by the Appellant, the grounds of appeal have to be set out. The appeal is against the decision of theOD, so the statement (regardless of whatever other content the appellant chooses to load it up with) has to tell the TBA how it is, that the OD Decision is not well-founded.
So I don’t see Rule 12 of RPBA 2020 as ultra vires or in breach of the Convention.
I lack the qualifications and experience to opine on the question whether the upstep of “efficiency” striven for in RPBA 2020 comes at too high a price. I suspect you guys think that it does. I suspect that it is still too early to know, and that the current differences of opinion amongst the various Boards is simply a manifestation of the Darwinian “survival of the fittest” characteristic of case law development at the EPO which has made the established case law so robust.
Dear Max Drei,
I have never stated that R 12a-12d were ultra vires or in breach of the EPC. I just said that those rules do not guarantee the independence necessary for a judicial body.
There is no R 12 RPBA, at best Art 12 RPBA. There again, I have never said that Art 12 RPBA is ultra vires or in breach of the EPC. It simply gives a broad discretion to the boards in procedural matters.
The valid RPBA have simply given a legal frame to procedural decisions taken under the previous RPBA. From the outset, the appeal procedure has always been loaded up front. The first and second levels of convergence were already present in the previous RPBA.
The main difference is the introduction in the valid RPBA of the third level of convergence, which drastically limits very late submissions. This is not problem as such, it is more the way that all three levels of convergence are dealt with by the boards.
As I am following the case law of the boards for many years, I am in a position to say that the procedural case law of the boards under the present RPBA is far of being convergent or coherent and is barely predictable.
I would draw a bid distinction between procedural and substantive case law. Some decisions might be problematic, something which can always happen, but I agree with you that the boards have managed to build up a robust body of substantial case law. This has certainly helped the success of the EPO. It would be a pity that this success on the substantial side becomes endangered by a great chaos when it comes to procedure.