3.2.2 Complete case on appeal

Under Art. 12(3) RPBA 2020, the statement of grounds of appeal and the reply must contain a party's complete appeal case. Accordingly, they must set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on.

The board has a discretion not to admit any submission by a party that does not meet the requirements of Art. 12(3) RPBA 2020, see Art. 12(4) RPBA 2020. Art. 12(3) RPBA 2020 essentially corresponds to Art. 12(2) RPBA 2007.

In T 2457/16, the patent proprietor submitted a large number of auxiliary requests with the statement of grounds of appeal. The board found that the patent proprietor had not explained the amendments made in these auxiliary requests or their purpose, leaving the board and the opponent unsure as to the order in which the auxiliary requests were to be examined, precisely what amendments had been made in the requests and the reasons why they had been made. That was contrary to the requirement under Art. 12(3) RPBA 2020 that parties must submit their complete case in the statement of grounds of appeal; the patent proprietor had thereby shifted to the opponent and the board the responsibility – properly incumbent on it – to select from the numerous requests one that might ultimately be allowable (see also R 11/08).

In T 412/18, the board indicated that an appeal case in which the substantiation for a particular objection had to be pieced together from parts of the rest of the case that, when read on their own, had no readily discernible link with the issue addressed in the objection was not a complete case within the meaning of Art. 12(3) RPBA 2020. This approach ran counter to the purpose of that provision, namely that the parties had to present a complete case at the start of the proceedings in order to provide the board (and the other parties) with an appeal file that contained every party's complete case and to prevent any tactical procedural abuse (see also T 1488/08, referring to the then applicable Art. 12(2) RPBA 2007). Consequently, the board did not take the inventive-step objection into consideration.

In T 706/17, the board held that a sweeping reference to the opposition case was insufficient for establishing why the contested decision should be reversed. Under Art. 108 EPC, R. 99(2) EPC and Art. 12(3) RPBA 2020 or Art. 12(2) RPBA 2007, the appellant (opponent) had to present a complete case in its statement of grounds of appeal that allowed the board and the other parties to understand why the contested decision should be reversed without having to make any further investigations of their own. The appellant's inventive-step objections were therefore disregarded on appeal pursuant to Art. 12(4) RPBA 2007.

In R 8/16 the Enlarged Board rejected the argument that the board should have known, and therefore should have considered, the petitioner's arguments from the file as presented before the opposition division. The board had no obligation to peruse the whole file of the first-instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as set out in Art. 12(1) and (2) RPBA 2007. In T 16/14, the board explained that the words "to the extent necessary" (see R 8/16) did not imply that a board had to consider the submissions from the first-instance proceedings. In its view, they meant that any submission not relevant for the issues to be dealt with on appeal did not have to be presented again. It concluded that a mere reference to the case made at first instance did not meet the requirements of Art. 12(2) RPBA 2007. Consequently, the appellant's (opponent's) arguments in relation to documents E1/E1a and E2/E2a were not to be considered in the appeal proceedings pursuant to Art. 12(4) RPBA 2007.

See also chapter V.A.2.6.3g) "Complete case within the meaning of Art. 12(3) RPBA 2020", in relation to admissibility of the appeal.