5.12.6 Unsubstantiated requests

In a number of decisions, it has been observed that unsubstantiated auxiliary requests cannot be considered or are not admissible in appeal proceedings (see e.g. T 667/18).

Under Art. 12(2) RPBA 2007 (referred to in Art. 12(4) RPBA 2007, which may still apply in some cases by virtue of Art. 25(2) RPBA 2020), the statement of grounds of appeal and the reply must set out the parties' complete case. In particular, it must be set out why it is requested that the decision under appeal be amended or upheld. Taken as a whole, the RPBA 2007 make it clear that appeal proceedings are primarily written in nature, with Art. 12(2) RPBA 2007 requiring that the parties' complete case be submitted at the outset. The purpose of this provision is to ensure fair proceedings for all concerned and to enable the board to start working on the case on the basis of both parties' complete submissions. In inter partes proceedings, both rights and obligations should be divided equally among the parties so that the board can perform its independent judicial function (T 217/10, T 1732/10, T 1890/09).

In T 2598/12 it was stated that there was no time bar to the requirement following from Art. 12(2) and (4) RPBA 2007 that a request filed during appeal proceedings must be properly substantiated. Consequently, this requirement applies, mutatis mutandis, to new requests filed in response to a communication of the board.

In T 217/10 the board observed that it was not only for the appellant to substantiate its appeal but equally for the respondent to show at an early stage why it considered that the objections raised in the grounds of appeal did not withstand scrutiny. If auxiliary requests were submitted, reasons usually had to be given to explain how they overcame those objections (at least if this was not obvious from the amendments made). See also T 420/14.

In T 1732/10 the board held that not reacting in substance to the appeal of the opponent, but waiting for the board's preliminary opinion before any substantive reaction is filed, is regarded as an abuse of procedure. This is all the more so if the substantiation for all the requests, which were filed after summons to oral proceedings have been sent, is filed only shortly before the oral proceedings before the board. Such requests – which are not self-explanatory – are considered by the board as submitted only on the date of their substantiation.

The boards in T 1836/12, T 1784/14, T 2288/12, T 2101/14 and T 319/18 similarly confirmed that requests which were not self-explanatory were deemed to have been filed only on the date on which they were substantiated.

Auxiliary requests filed by proprietors with their statement of grounds of appeal or reply could not be admitted if they neglected also to specify why the contested decision should be amended or the patent maintained (T 2355/14).

In T 568/14 the board acknowledged that auxiliary requests, if filed without any explanation, may be deemed inadmissible or not validly filed (see e.g. T 253/06). This does not however apply if no explanation as to why amendments are filed is needed because they are self-explanatory. This condition was met in the present case. The explanation submitted in T 687/15 was not self-explanatory. The appellant had merely stated that the new requests represented "fall back" positions.

In the following cases too, the appellants (proprietors/applicants) failed to provide (adequate) reasons and so to meet the requirements of Art. 12(2) RPBA 2007.

In T 1533/13 the board stated that the appellant had filed ten auxiliary requests with the statement of grounds of appeal, containing various parameters, and had provided no explanation at all in the statement of grounds of appeal as to why all these parameters had been introduced and which of the opposition division's objections was therefore overcome. 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 (T 933/09). Endorsed in T 319/18.

In T 2077/13 the board pointed out that filing a request that was previously known to the parties at a late stage of the appeal proceedings does not exempt the appellant from its obligation to provide at least some substantiation with regard to the allowability of this request.

In T 946/16 the patent proprietor had in its statement of grounds of appeal merely said that the arguments substantiating inventive step for the main request applied to all of the auxiliary requests too. It had not said – even implicitly – how the amendments made in the auxiliary request at issue supported its line of argument against the opposition division's finding that the patent as granted lacked inventive step. See also T 2682/16.

On the topic of inadequate substantiation, see also T 1890/09, T 1836/12, T 1134/11, T 162/12, T 122/13, T 964/13, T 940/14 and T 1323/17.