2.6.5 References to earlier submissions

The boards have frequently held that a statement of grounds referring generally to submissions made at first instance, as a rule, cannot be considered sufficient for the purposes of Art. 108, third sentence, EPC (see e.g. T 254/88, T 432/88, T 534/89, T 90/90, T 154/90, OJ 1993, 505; T 287/90, T 188/92, T 646/92, T 473/09, T 47/12, T 450/13, T 16/14, T 2411/16).

In T 1311/13 the board stated that a mere reference to a party's earlier submissions and/or the verbatim repetition of the arguments presented in those submissions ("grounds by cut-and-paste"), including the submissions or arguments put forward at the oral proceedings before the opposition division, without actually dealing with, or entering into a discussion of the reasons given in the decision under appeal by the opposition division for arriving at its decision, was not enough to substantiate a ground of appeal.

In T 432/88 the appeal filed only made a general reference to the appellant's submissions in the preceding opposition proceedings and thus amounted to no more than a mere assertion that the contested decision was incorrect, without stating the legal or factual reasons why that decision should be set aside. Consequently, the appellant had left it entirely to the board and the respondent to conjecture in what respect the appellant might consider the decision under appeal to be defective. This was followed in T 534/89, where the board pointed out that otherwise the respondent is at a loss to know how to prepare his case and the board cannot direct the appeal proceedings in an efficient way.

Merely referring to one's own first-instance submissions could not normally replace an explicit account of the legal and factual reasons for the appeal. Only exceptionally did the case law allow substantiation to take that form. References to earlier submissions, even when taken together with the contested decision, did not as a rule clearly indicate which grounds of the decision were regarded as mistaken, and why. The board and the opposing party could not then consider the merits of the appeal without making investigations of their own (T 349/00). See also T 165/00. According to the case law of the Boards of Appeal, the grounds of appeal should state the legal and factual reasons why the appeal should be allowed and the contested decision set aside. It is not enough merely to seek fresh examination of the patentability requirement found not to be met at the previous instance by indicating disagreement with that finding (see T 220/83, OJ 1986, 249; T 213/85, OJ 1987, 482; T 145/88, OJ 1991, 251; T 1462/08; T 2077/11).

In T 2556/16 the board stated that merely referring to one's own submissions in the first instance proceedings could not normally replace an explicit account of the legal and factual reasons for the appeal (see T 2012/16). This applied even more, when the absence of evidence for an alleged common general knowledge was one of the decisive reasons in the first instance decision for rejecting the opposition. The appeal had to be found inadmissible.

In a small number of isolated decisions, however, the boards have accepted a general reference to submissions at first instance as potentially constituting grounds for an admissible appeal (T 355/86, T 140/88, T 725/89, T 869/91, T 216/10), but these decisions were given in special cases in which those submissions already adequately addressed the grounds underlying the contested decision.