2.6.3 Content of the statement of grounds of 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.
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In T 395/12 the appeal was also held inadmissible; the applicant's only statement that directly addressed the decision under appeal was that the examining division was "wrong", with no explanation why. Decisions T 213/85 (OJ 1987, 482) and T 95/10 clarify that the appeal procedure is not a mere continuation of the examination procedure (in accordance with decisions G 10/91, OJ 1993, 420; G 9/92 date: 1994-07-14, OJ 1994, 875 and G 4/93, OJ 1994, 875), but separate therefrom. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal; they are not a second go at the examination procedure, but are meant to review decisions made by the examining divisions, based on the objections raised against the decision in the grounds of appeal, which must therefore relate to the reasons on which the decision under appeal is based. The appeal had also to be considered inadmissible because the grounds failed to deal with all the reasons the examination division advanced for refusing the application. According to T 1045/02, the grounds of appeal must deal with all those reasons on which the decision under appeal is based. This is consistent with the requirement of Art. 12(2) RPBA 2007, according to which, "The statement of grounds of appeal and the reply shall contain a party's complete case". See also T 473/09, where the appeal was also held inadmissible as the grounds failed to deal with all the reasons for refusing the application and T 918/17.
However, according to the board in T 1045/02, a statement of grounds failed to meet the minimum requirements if it dealt with only one of several grounds for refusal. In T 1407/17 the board found that the grounds of appeal gave no indication of why the ground for refusal under Art. 56 EPC was unfounded. One of the three independent grounds for refusal that had led to the appealed decision had therefore not been addressed.
- Case law 2019