2.6.4 New case raised
i) General
It is settled case law that the grounds for appeal can also be considered sufficient where they refer to new facts which deprive the decision of its legal basis (T 252/95, T 760/08), particularly where new sets of claims are filed (T 934/02, T 2226/13). An appeal is not necessarily rendered inadmissible by an appellant filing amended claims, and defending the patent solely on the basis of claims as amended in the grounds of appeal (T 1320/19).
In T 655/03 an appeal by the patent proprietor was to be considered as sufficiently substantiated to satisfy the requirements of Art. 108 EPC, third sentence, even if it did not state any specific reason why the decision was contested, provided that two criteria were met: there is a change in the subject of the proceedings due to the filing of amended claims together with the statement setting out the grounds of appeal, and the reasons for the decision are no longer relevant in view of the amended claims. See also T 717/01, T 934/02 and T 1708/08.
The board in T 934/02 added that it was therefore not necessary and would also be pointless for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) was no longer defending in the appeal proceedings. See also T 1197/03 and T 642/05. However, where the application was not refused on the basis that the previous set of claims on file could not be allowed, i.e. for lack of clarity, novelty or inventive step, rather on the ground that there was no agreed set of claims, filing new claims was not an adequate response (T 573/09); the statement of grounds should have set out why the appellant should be given the opportunity to have the proceedings continued before the board.
In T 2532/11 the question arose whether newly filed requests could be seen as implicit grounds of appeal. A statement of grounds of appeal supported by amended claims may define, at least implicitly, the extent to which the appellant wishes the decision under appeal to be set aside. The board of appeal has the duty to assess whether the appeal is well founded within the framework of the case as presented by the appellants but it cannot guess what the arguments are, let alone, provide arguments in lieu of the appellants. A direct link must be maintained between the decision under appeal and the statement of grounds of appeal, which had not been done in the case in hand.
Where amended claims are filed, the appeal's admissibility does not depend on whether the board later admits those claims into the proceedings or whether the appellant's case is ultimately convincing (T 2558/16). The extent to which amended claims filed with the statement of grounds of appeal are taken into consideration is at the board's discretion as per Art. 12(4) RPBA 2020; for more detail on this point, see chapter V.A.4.3 "First level of the convergent approach – submissions in the grounds of appeal and the reply – Article 12(3) to (6) RPBA 2020".
ii) Adequate reasoning for filing amended claims
- Patent proprietor
It is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. Where amended claims have been filed, an appeal may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division (T 1668/14, see also T 278/15, T 1311/17 and T 1320/19). In T 1610/15, the board added that the appeal's admissibility did not depend on whether the appellant's case was ultimately convincing or whether the board later admitted the amended claims into the proceedings. See also T 1320/19.
However, it was not enough merely to file a new set of claims without comment. Rather, appellants had to set out why and to what extent the amended set of claims was a response to the factual and legal assessment on which the opposition division had based its decision (T 220/83, OJ 1986, 249; and T 145/88).
The amendments should address the reasons for the decision being contested (T 2453/09). See also T 1533/13.
In T 1276/05 the patent proprietor/appellant reverted back to a form of claim which had been effectively withdrawn during the opposition proceedings, i.e. the patent as granted, without explaining why the contested decision was wrong. The board noted that the lack of a need for explanation was based on the specific situation of the case before it, wherein – unusually – the offered amendments self-evidently overcame the grounds for the decision and the appeal was thus admissible.
- Applicant
In T 933/09 the board considered that the mere filing of amended claims did not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based.
The mere fact of filing amended claims with the statement of grounds of appeal is not sufficient if it does not overcome the reasons for the refusal in the case at issue. The appellant in T 1707/07 did not address the reasons given in the decision under appeal and it was thus not clear to the board why the decision under appeal was alleged to be incorrect. The appeal was rejected as inadmissible. See also T 502/02 and T 132/03.
In T 295/04, the statement of grounds contained only a general reference to pleadings submitted during the proceedings at first instance and a set of new claims. Since such a general reference could not be regarded as setting out why the department of first instance's decision should be amended, the appeal was dismissed as inadmissible.