2.6. Statement of grounds of appeal

In T 2884/18, the appeal was rejected as inadmissible. The board considered the statement of grounds of appeal insufficient as it primarily discussed only the opposition division's finding in the contested decision that the asserted public prior use had not been adequately demonstrated, while failing to duly substantiate a lack of novelty in view of that public prior use. The board explained that, for a case based on chains of reasoning to be complete, as Art. 108 EPC and Art. 12 RPBA 2020 required, it was necessary to set out all the facts that led to the asserted legal outcome only when considered cumulatively. The approach had to mirror that in proceedings against a decision listing various alternative reasons why a patent could not be granted or maintained. In this respect, the case law of the boards of appeal had it that an appeal could be deemed sufficiently substantiated only if it addressed all the grounds precluding patentability. Only then had a case for setting the decision aside been made (see T 922/05). The same had to apply in reverse if several grounds cast doubt on the patentability of a maintained patent only when considered cumulatively, as was the case here: prior use forming part of the prior art and prior use anticipating the invention. If out of a number of facts having to be considered cumulatively in order to alter the decision just one was sufficiently substantiated, the appeal was inadmissible.

Under Art. 108, third sentence, EPC in conjunction with R. 99(2) EPC, the statement of grounds of appeal must indicate the reasons for setting aside the decision. It is the boards' settled case law that this statement has to deal with all the main reasons for the contested decision in order to be considered sufficient for the purposes of admitting an appeal. In T 1904/14 the board held that to apply even where the reasoning in the contested decision was wrong or contradictory. In the contested decision in that case, the examining division had concluded that the subject-matter of claim 1 of the then first auxiliary request, which was identical to the main request on appeal, was not clear within the meaning of Art. 84 EPC. A lack of clarity was a main reason in the decision why none of the requests had been grantable. But the appellant had not addressed this ground for refusal at all in its grounds for appeal. It had argued neither that the claims objected to were clear nor that the reasoning for the decision reached under Art. 84 EPC as regards the then auxiliary requests was wrong, contradictory or otherwise inadequate. Nor had it filed any new requests to overcome the clarity objections. Instead, it had complained of a contradiction in the contested decision's reasoning only in response to the board's preliminary opinion. But the R. 99(2) EPC requirement for admissibility – a sufficient statement of grounds of appeal – had to be met by the deadline in Art. 108, third sentence, EPC for filing it; it could not be met retroactively by a late submission. Hence the appellant's allegation, first brought forward in the aforementioned letter, that the examining division had committed a procedural error due to the inadequate reasoning of its decision, should also already have been raised in the grounds of appeal. A wrong, contradictory or incomplete decision did not absolve an appellant of the need to address such deficiencies there. Consequently, the appeal had to be rejected as inadmissible.

In T 16/14, on the relevance of documents E1/E1a and E2/E2a for the patentability of the subject-matter of claim 1 according to the main request, the board observed that the appellant's statement of grounds of appeal merely referred to its notice of opposition and written submissions at first instance, i.e. to the written case it had made as opponent in those first-instance proceedings. Under Art. 12(2) RPBA 2007, the statement of grounds of appeal had to contain the party's complete case and specify expressly all the facts, arguments and evidence relied on and it was the boards' settled case law that a statement referring generally to submissions at first instance was usually insufficient. The appellant ought to have dealt explicitly with the substance of documents E1/E1a and E2/E2a in its statement. The board therefore concluded that the requirements of Art. 12(2) RPBA 2007 were not met by the mere reference to the case made at first instance and that the submissions on documents E1/E1a and E2/E2a therefore had to be disregarded on appeal in accordance with Art. 12(4) RPBA 2007.