b) Incomplete appeal case – Article 12(3) RPBA 2020 

(i) Requests – failure to indicate why the amendments overcome the outstanding issues

In T 2115/17 the board held that merely identifying an amendment was not enough to enable it and the appellant (opponent) to understand the rationale behind the request concerned. On the contrary, it put the onus on the board and the appellant to piece together or deduce the case being made and come up with suitable responses, which was at odds with the requirements of Art. 12(3) RPBA 2020 (see T 687/15, dealing with Art. 12(2) RPBA 2007).

Similarly, in T 203/20 the appellant filed auxiliary request 9 with the statement of grounds of appeal, but failed to provide a substantiation as to why the amendments made would overcome objections against any higher-ranking request. A later reference by the appellant to the substantiation made during the proceedings before the opposition division was not considered sufficient by the board (citing T 1311/11). See also T 430/20, in which the appellant failed to give reasons why the decision under appeal was wrong in finding that the features now added in the new auxiliary requests were disclosed by a prior art document.

Equally strict requirements were also applied to auxiliary requests in cases where the opposition division had rejected the opposition:

In T 904/21 the board did not admit auxiliary request 4 (which was filed by the respondent – patent proprietor – with the reply to the statement of grounds of appeal and corresponded to an auxiliary request filed during opposition proceedings), as the respondent had failed to indicate in its submissions how the additional features could overcome the objection of lack of inventive step raised by the appellant in its statement of grounds of appeal.

Likewise, the board in T 1959/19 decided that the respondent (patent proprietor) had not satisfied the requirements of Art. 12(3) RPBA 2020 since, when filing auxiliary requests I to XVII, which had already been submitted in the opposition proceedings, the respondent had failed to substantiate why they were suitable for overcoming the appellant's objections. The board rejected the respondent's argument that the wording of the requests made it clear why they met the requirements of the EPC, namely simply because auxiliary requests I to XVII had been further distinguished from the prior art compared with the version as granted. In the board's view, the prior art from which the subject-matter had been distinguished was not immediately discernible. The board exercised its discretion under Art. 13(2) RPBA 2020 not to admit the late substantiation. See also T 262/20 and T 312/22.

(ii) Requests – reference to requests or supporting arguments filed at first instance

In T 2457/16 the board held that the patent proprietor's conduct was not in keeping with the requirement in Art. 12(3) RPBA 2020 that the grounds of appeal contain the party's complete case, because it had not only not explained what amendments had been made in its auxiliary requests or their purpose but had also made sweeping reference to requests filed at first instance that were supposed to still apply on an auxiliary basis, without giving any further details and thus leaving it unclear which requests were to be examined in what order. 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). The board therefore decided not to admit the auxiliary requests in question (Art. 12(4) and (2) RPBA 2007 and Art. 12(3) and (5) RPBA 2020).

Likewise, the board in T 1041/21 deemed sweeping references made by the respondent (patent proprietor; the successful party in the first-instance proceedings) to its case in those proceedings to be inconsistent with the requirement of Art. 12(3) RPBA 2020. Referring to or merely repeating arguments made in the opposition proceedings did not make it immediately clear for either the board or the other party which objections raised by the appellant in its appeal against the main request had been remedied by the amendments made in the auxiliary requests, or to what extent and why. The board exercised its discretion under Art. 12(5) RPBA 2020 not to admit these auxiliary requests into the proceedings for lack of substantiation. Approach confirmed in T 503/20, which refers to the wording of Art. 12(3) RPBA 2020 und Art. 12(5) RPBA 2020 and the explanatory remarks on Art. 12(5) RPBA 2020 (Supplementary publication 2, OJ 2020, p. 57 > 17).

(iii) Requests – claims not presented in full

In T 1421/20 requests 1a to 5a were introduced and commented on in the statement of the grounds of appeal but no claims were filed at that stage. Hence they did not fulfil the requirements of Art. 12(3) RPBA 2020 and the board had discretion not to admit them into the proceedings for this reason only (Art. 12(5) RPBA 2020). Since the requests were not part of the decision under appeal, they were further considered to be amendments (Art. 12(2) and (4) RPBA 2020).

(iv) Defence – reference to first instance submissions

In T 503/20, in which the respondent (patent proprietor) disputed an alleged public prior use, the board decided to take no account of the part of the case in the reply to the appeal that merely made a sweeping reference to the opposition case. The board justified this in particular on the grounds that the respondent had not discussed the decision in any way, even though the decision had spelled out why the public prior use was deemed to have been proven and which patentable features were deemed to have been disclosed as a result. The board noted that simply referring to the opposition case was not a substitute for appropriate substantiation in the appeal proceedings; it was imperative to present a complete case as per Art. 12(3) RPBA 2020, first sentence, and second sentence, second half-sentence, RPBA 2020 because it cannot be left to the board to investigate which of the arguments from the opposition proceedings might still be relevant in light of the contested decision and its findings (as in T 1792/17 regarding RPBA 2007). By the same token, the board refused to admit the extracts from the reply to the opposition and the rejoinder in the opposition proceedings included in a later submission on appeal because they merely repeated the arguments from said earlier submissions word for word and the patent proprietor did not discuss the opposition division's findings any further. As already established in T 1041/21, it made no difference whether reference was made to said arguments or whether they were resubmitted without being adapted to the case.

(v) Objections – reference to first instance submissions – no specific reasons provided why the opposition division’s findings are considered wrong

Under Art. 12(3) RPBA 2020, the appellant (opponent) has to set out clearly the reasons for requesting that the decision under appeal be reversed and specify expressly all facts, objections and evidence relied on. Attacking the decision only generally or referring generally to the case made in the opposition proceedings was not enough for this (T 2796/17).

In other words, in order to substantiate an objection in the appeal proceedings which the opposition division did not consider convincing, it is necessary to provide specific reasons why the finding and the reasoning in the decision under appeal are supposedly incorrect with regard to this objection. Arguments which have already been put forward in the opposition proceedings may be included in these reasons, but must be put in the context of the decision under appeal (T 2117/18 applying Art. 12(2) RPBA 2007).

In T 2253/16 the only argument the appellant (opponent) had put forward in its grounds of appeal in support of its assertion that the subject-matter of claim 1 lacked novelty over D4 was that the contested decision contradicted itself on one of the features. The board observed that there was no analysis of D4 showing where the appellant considered what claim features to be disclosed. Art. 12(3) RPBA 2020 required that the grounds of appeal contain the appellant's complete case. The board could not simply refer to the submissions made in the opposition proceedings, it being clear from Art. 12(3) RPBA 2020 that they were not automatically part of the appeal case. An unspecific reference to the notice of opposition made no difference; Art. 12(3) RPBA 2020 required that all facts and objections be specified expressly.

For further cases relating to insufficient substantiation of an objection, see e.g. T 2227/15 (with regard to Art. 12(2) RPBA 2007, which, as the board noted, corresponds to Art. 12(3) RPBA 2020), T 565/16, T 1617/20, T 557/21, T 186/20. In all these cases, there was no substantiation of why the opposition division's reasoning and conclusions should be found to be incorrect.

However, see also T 108/20 regarding sweeping references to a submission in the first-instance proceedings to which no response was given (objections against auxiliary request 3).

(vi) Objections – failure to address auxiliary requests filed in opposition proceedings but not considered in the contested decision

According to the board in T 664/20, the statement of grounds of appeal of an appellant (opponent) had to include its entire case as regards all the requests pending before the opposition division, including those which were not considered in the contested decision. Otherwise, the appellant would run the risk that submissions filed after the statement of grounds of appeal and relating to those requests would be excluded from the proceedings. In this case, the appellant had produced documents from an additional search only after the proprietor had re-filed requests already submitted at the oral proceedings before the opposition division but not decided upon by it. As a result, the board decided not to admit these documents under Art. 12(3) and 13(1) RPBA 2020.

For a different view, however, see T 2035/16. In a similar situation the board considered that the rejoinder had been the first opportunity for the opponent to respond to the introduction of the auxiliary request in appeal proceedings. According to the board, while it was true that the same request had been submitted to the opposition division, their decision had not deal with it, and it had not been part of appeal proceedings until the proprietor had sought to make it so. See also T 2872/19 (applying Art. 12(4) RPBA 2007).

(vii) Case not fully prepared

In J 3/20 the appellant invoked the principle of protection of legitimate expectations for the first time during oral proceedings before the Legal Board of Appeal and alleged that it had trusted the content of a communication in a parallel case, which, however, it had already received in 2016. The Legal Board of Appeal highlighted that the condition in Art. 12(3), first sentence, RPBA 2020 required a complete preparation considering all the relevant documents that were available. Thus, in its view, no reasons were apparent that could justify why the appellant had presented the new defence and the underlying facts for the first time at such a late stage of the proceedings, thereby counteracting principles of procedural economy.