The present decision reminds us that unlike oppositions, appeals attack decisions, not patents. Therefore, it is risky to file a statement of grounds of appeal that only restates the arguments set forth in the notice of opposition without pointing out the shortcomings of the decision against which the appeal has been filed.
[4] The appellant conceded that the statement of grounds of appeal is “more or less an adaptation or condensation of the notice of opposition”. There can be no doubt at all that the statement of grounds of appeal was prepared by simple editing of the earlier notice of opposition so as, for example, to refer to claims numbered as in the request allowed by the Opposition Division (OD).
Moreover, the editing was clearly done in great haste and/or with insufficient attention so that some obvious mis-spellings occurred and an objection in the notice of opposition (that under A 53a) was retained even though, as a result of the decision under appeal, it had become redundant.
The respondent almost correctly observed that the only reference to the decision under appeal was in the request to set it aside - in fact there were two such references, on each on the first and last pages of the statement of grounds of appeal, and a third mention of the decision also on the first page in the sentence beginning "Claim 1 of the opposed patent as mentioned with the Interlocutory Decision pertains to...". That third reference immediately precedes the use of some twenty-one pages of text, recycled with slight editing from the notice of opposition, which contain no other reference whatsoever to the decision under appeal, let alone any attempt to relate its content to that decision. The respondent was beyond doubt correct to say it was a “copy and paste” version of the notice of opposition. The appellant was beyond doubt correct to say that there is no verbatim or explicit link between the grounds of appeal and the decision.
[5] A 108, third sentence, is the basic legal provision relating to statements of grounds of appeal. It requires that:
Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.
The importance of this provision is that, by requiring a statement of grounds of appeal, it calls for something more than, and different from, submissions made at first instance. As to what form that should take, one must turn to the Implementing Regulations.
[6] The relevant provision of the Implementing Regulations is R 99(2) which sets out in general terms the required contents of a statement of grounds of appeal. It reads:
In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.
This makes quite clear that the statement of grounds of appeal must, first, supply the appellant’s reasons for attacking the decision under appeal and, second, put forward the facts and evidence on which the appeal is based. Again, it is significant that R 99(2) refers here to the appeal and not to the opposition. Of course, R 99 governs appeals against other decisions than those of the OD. However, even within the limited ambit of opposition proceedings, the obligatory requirement is to substantiate the appeal and not just refer to or repeat the substantiation of the opposition. This distinction - namely, that oppositions attack patents, but appeals attack decisions - is crucial and the attack must be presented accordingly.
[7] Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires:
The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall 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 facts, arguments and evidence relied on.
The similarity of Article 12(2) RPBA to R 99(2) is clear. Again, there is the requirement to give reasons for attacking the decision under appeal and to put forward the facts, arguments and evidence relied on, which clearly means relied on in the appeal. Additionally, the statement of grounds of appeal must contain an appellant’s complete case (if only because later amendments are not necessarily allowable - see Article 13(1) RPBA) and the facts, arguments and evidence must be specified “expressly”.
[8] Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant’s case why it considers the decision under appeal to be wrong. A detailed survey of the case-law in question is at pages 621 to 625 of “Case Law” in the section VII.D.7.5 entitled “Statement of grounds of appeal”.
It is sufficient to mention here the general principles established by early case-law, namely that
(a) the statement of grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based, present clear and concise arguments to enable the board and the other party or parties to understand immediately why the decision is alleged to be incorrect, and on what facts the arguments are based, without first having to make investigations of their own; and
(b) to be sufficient for admissibility, the grounds of appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision.
[9] Just as there is a noticeable similarity between R 99(2) and Article 12(2) RPBA as already noted (see [7] above), so there is also an equally noticeable similarity between Article 12(2) RPBA and the basic principles of the case law (see [7] and (a) and (b) in [8] above). This is not coincidental. As has been observed elsewhere (see T 87/05), the RPBA are in part at least a codification of the case-law on procedural practice. It would indeed be surprising if the RPBA did not reflect the case-law. This means that compliance with the basic principles of the case-law on substantiation will often ensure compliance with Article 12(2) RPBA - and vice versa. It also means that recourse to the case-law is unlikely to avoid a finding of inadmissibility if Article 12(2) RPBA has not been complied with. Article 12(2) RPBA provides the essential test of substantiation which the case-law supplements but over which it does not take precedence. The [opponent] referred to Article 12(2) RPBA as “crucial” and the Board agrees.
[10] To summarise, the legislation and the case-law are unanimous in the requirement that a statement of grounds of appeal must present a reasoned case against the decision under appeal. All of A 108 and R 99(2) and Article 12(2) RPBA require reasons to support the appeal and both R 99(2) and Article 12(2) RPBA require those reasons to say why the decision under appeal is attacked.
While clearly implicit in those legislative requirements, the caselaw adds that the grounds of appeal must be analysed vis-à-vis the reasons in the decision under appeal and must enable the board and the respondent to understand immediately why the decision is alleged to be incorrect: what the Board in its communication called the need for “argument or reasoning linking the matters set out in the statement of grounds with the reasons given by the OD in its decision”.
The legislation does not say in more detail how that link is to be made but, by requiring a complete case setting out expressly the facts, arguments and evidence relied on, Article 12(2) RPBA indicates it should, to use the appellant’s word, be verbatim. If not spelled out in terms, the link must be at the very least be apparent from the expressly-stated contents of the statement of grounds of appeal, since the board and the other party or parties must be able to understand the appellant’s case from the statement without having to make investigations of their own (see point 8(a) above). […]
The appeal is rejected as inadmissible.
To read the whole decision, please click here.
NB: This decision has already been reported on the Blog du droit européen.
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