Monday, 15 February 2010

T 509/07 – No Partial Admissibility, But …

The present decision shows that despite the fact that there is no “partial admissibility” of appeals under the EPC, this does not rule out the possibility that one or more (but not all) of the requests of the appeal be inadmissible.

[…] Under established case law, the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. If the appellant submits that the decision under appeal is incorrect, the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of their own (cf. T 220/83 [4], affirmed by numerous decisions and more recently by T 809/06 [2]). In principle, a statement of grounds which merely refers generally to previous submissions is not considered sufficient. An exception to this principle has been acknowledged where the arguments presented at first instance already adequately addressed the grounds underlying the contested decision. Similarly, a brief statement may be considered sufficient where a substantial violation of the first-instance proceedings occurred, or where a reading of the impugned decision itself reveals that it cannot be upheld (see T 809/06 [4], and the cases cited there). [1.3]

The board considers that the requirements of established case law set out above are clearly complied with in relation to the first auxiliary request submitted with the statement of grounds. Whether or not sufficient grounds relating to the main request have been submitted is immaterial for the purposes of admissibility of the appeal because an appeal can only be assessed as a whole; see T 382/96 [1]. There is no support in the EPC for a notion of “partial admissibility” of an appeal (see T 774/97 [1.1]). In other words: if the admissibility requirements, in particular those of A 108, third sentence, are fulfilled at least in respect of one request, the appeal as a whole will be admissible. As a consequence, the present appeal is admissible. [1.4]

However it is a different question whether a request in relation to which the admissibility requirements are not met, in particular where sufficient grounds within the meaning of A 108, third sentence, have not been furnished in relation to that request, is admitted into appeal proceedings.

In decision T 382/96 [5.5] it was held that several requests could not be admitted into the appeal proceedings because no grounds of appeal within the meaning of A 108 had been filed in relation to those requests. In the board’s view this conclusion can be arrived at by assuming that such requests cannot be considered in appeal proceedings. In this context the Rules of Procedure of the Boards of Appeal are also of interest. Pursuant to Article 12(1)(a) RPBA, appeal proceedings shall be based on the notice of appeal and statement of grounds of appeal filed pursuant to A 108. Under Article 12(2) RPBA the statement of grounds of appeal shall contain a party’s complete case, setting out clearly the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Article 12(4), in pertinent part, provides that everything presented under Article 12(1) shall be taken into account by the board if and to the extent it meets the requirements of Article 12(2). It could be concluded, a contrario, that one need not take into account matter which does not meet the requirements of Article 12(2) if the appellant has not specified the facts, arguments and evidence on which the appeal proceedings shall be based, but which might be supplemented later on. For, under Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. [2.1]

In the present case the board stated in an annex to the summons to oral proceedings (OPs) that the statement of grounds of appeal comprised only one sentence concerning the claims according to the main request, namely “However, the applicant believes that the current application satisfies A 84, A 54 and A 56 and maintains his respective arguments presented up to now in the examination procedure.” The board added that this sentence appeared to neither set out clearly the reasons why it was requested that the decision under appeal be reversed, nor to specify which of the facts, arguments and evidence presented in the examination proceedings were relied on in appeal proceedings. In the OPs the chairman reiterated that the statement of grounds did not contain sufficient information for the board to discern why the appellant believed the decision under appeal to be wrong, in particular in regard of the assessment of the feature “imperceptibly different”. The appellant’s submissions in reply, for instance that the invention was a cutting edge technology and thus the claims should not be unduly limited, did not address the relevant reasons in the decision under appeal and thus were not apt to change the board’s view that the statement of grounds was deficient. Nor did the arguments presented at first instance, for instance that the description defined the term “imperceptibly different”, make it possible for the board to immediately understand why the contested decision was alleged to be incorrect in its assessment that parameters specifying this term only in the description were not suitable for limiting the scope of the claims. For in the present case, the appellant’s arguments were already dealt with in the decision under appeal. Thus the board cannot understand immediately why the decision is alleged to be incorrect. Likewise the board is unable to recognise that a substantial procedural violation had occurred or detect from a mere reading of the decision that it could not be upheld. [2.2]

It follows that, in relation to the main request, sufficient grounds within the meaning of A 108, third sentence, or Article 12(2) RPBA have not been furnished within the respective four-month time limit nor at a later stage of the proceedings. As a consequence, the board arrived at a conclusion analogous to the one reached by the board in T 382/96 [5.5], that the main request cannot be admitted into the appeal proceedings. This conclusion can also be based on the provisions of the RPBA set out under point 2.1. [2.3] 

To read the whole decision, click here

NB: This decision has also been commented here (in French).